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Judicial Decision analyzed by Taiwan Intellectual Property Office
Summarized, arranged and translated by Medic Ma Patent Engineer
How to Calculate Compensation for Patent Infringement
without Necessary Matters ?
Abstract of Civil Judicial Decision
(Taiwan Intellectual Property Court, Civil Appellate Case No. 014, date of judicial decision: 04.21.2016)
Appellant did not submit necessary matters (evidence such as invoice) duringthe preparatory proceeding , which is less than 14 days prior to the oral-argument session. The Appellant did not explain the reasons of the late submission of the necessary matters. Except for matters which the court shall investigate on its own initiative or which must be alleged or it would be manifestly unfair under the circumstances, the Appellant cannot allege in the oral-argument session. The court inspected the Output Documentary Evidence of the Appellant’s company enclosed with the letter from National Taxation Bureau, Ministry of Finance, R.O.C. to acquire sales of the Appellant’s company. Then based on the net profit ratio of the profit standard of the same trade concerned published by Ministry of Finance, R.O.C., the court calculated the profit of the Appellant’s company incurred as a result of the infringement on Appellee’s patent right.
Brief of the case
Though the Appellee had claimed and the trial court had ordered that the invoice of related products be provided, the Appellant did not serve the Court’s order for the reason that the invoice went missing. The Appellant deliberately postponed the submission of the invoice concealed the quotations of prices and design charts. Hence,the Appellee could not present proof or evidence.
In accordance with Article 276 of the Taiwan Code of Civil Procedure, the Appellant should provide necessary matters within the statutory period designated by the court; otherwise, the court would decide compensation for the infringement on the basis of information from National Taxation Bureau, Ministry of Finance, R.O.C.
Common used calculation method of compensation for patent infringement
According to empirical analysis, the damages claimed by the patentee is usually calculated according to the profit earned by the infringer as a result of patent infringement on account that via this calculation method, the patentee needs not scruple trade secrets or any data leakage and provide internal documentation for the burden of proof in the legal proceedings. Nevertheless, the infringer may still conceal the evidence even though the court has given an order.
Conclusion and prospect
There are further issues, like: “whether or not the patentee gets reasonable compensation for patent infringement” and “how to properly calculate compensation and make up the damage for patent infringement if the infringer denied to submit necessary matters?” “Statutory damages” in Patent Law of the People's Republic of China and “the patentee’s assertions on the presented information may be deemed true” in Korean Patent Act can be taken into account as advice on Taiwan Patent Act amendment and patent related litigations.
Except for the following, no matter that has never been alleged in the preparatory proceeding may be alleged in the oral-argument session following the preparatory proceeding:
1. Matters which the court shall investigate on its own initiative;
2. Matters which will not delay the litigation;
3. Matters which could not be alleged in the preparatory proceeding due to reasons not imputable to the parties;
4. Matters which must be alleged or it would be manifestly unfair under the circumstances.
A preliminary showing shall be made as to the reasons provided in the third subparagraph of the preceding paragraph.