In judicial practice, the court for the patentee to submit the patent license contract and the relevant patent license fee payment vouchers for a more rigorous review.
(A) Even if the evidence of patent license is sufficient, the court also has the right to choose the statutory compensation
In the patentee has submitted to the court sufficient evidence of patent license, in this case, the judge still has the right to refuse to apply the standard, such as:
Changsha Red Star Construction Engineering Co. Name to view the full text of the decision): "the court examined that the patent license contract has been filed and has actually partially performed, the license fee itself is not obviously unreasonable circumstances, but the relevant laws and judicial interpretations do not stipulate that 'there is a patent license royalties, it is necessary to refer to a reasonable multiplier to determine the amount of damages for infringement. The amount of compensation."
(ii) no patent license royalty payment vouchers
lawsuit, the patentee will submit the patent license contract with the outsider, but no licensee actually pay royalty vouchers, based on this, the court found that the authenticity of the contract does not adopt, such as:
Ye JieDong and yueqing rongshu electric appliance co. Utility model patent dispute (click on the case name to view the full text of the decision): "as for the patent license contract submitted in the original trial, the proof of the effectiveness of the patent license contract filing certificate, although the patent license contract signed by leaf section east and Shanghai xiangzhou electrical equipment company limited by the state intellectual property office to review and approve the filing, but the patent license fee has been actually delivered, so the court considered that the authenticity of the contract has problems to be rejected. License royalties have been actually delivered, so the patent license royalties contained in the contract can not be used as a basis for calculating the amount of infringement damages."
Cheng Runchang and Guilin Hexin Industry Limited Liability Company, Gong Judeong infringement of utility model patent disputes (click on the name of the case to view the full text of the decision): "In this case, Cheng Runchang did not provide evidence to prove that he had signed a patent license contract with others, much less provide the patent license contract which has been reported to the patent office for the record and the licensee to pay the License fee, therefore, Cheng Runchang to patent technology transfer royalties as the basis for calculating its losses, the calculation method lacks factual basis, this court does not accept."
Shishi Xinjia Electronic Co., Ltd. and Shishi Longsheng Plastic and Electronic Co., Ltd. infringement of patent disputes appeal (click on the name of the case to view the full text of the decision): "Although Xinjia signed a patent implementation license contract with the patentee Li Renxu, Xinjia did not provide proof of payment of royalties of the patent licensee to prove that it had paid the royalties to the patentee Li Renxu, Xinjia failed to provide proof of payment of royalties to prove that it had paid the royalties to the patentee. The patentee Li Renxu paid the contract agreed 10 years 500,000 yuan of royalties; also did not prove that the contract has been registered with the State Intellectual Property Office within the statutory period for the record. Moreover, the patentee Li Renxu is the legal representative of xinjia company, is an interested party, so this case is not appropriate to determine the amount of compensation with reference to the contract agreed patent license royalties."
(C) the patent license contract with both parties have an interest
In the search for a number of judgments, the court more than one patent license contract for the patentee is the legal representative of the licensee company or shareholders and other reasons, that the contract with both parties have an interest, even if the contract is signed according to law to the state intellectual property office for the record, and the actual payment of royalties, the court also did not determine, such as: the patentee company's legal representative of the patent license fee. The court also does not recognize, such as:
Ningbo Baofeng measuring tools Co., Ltd. and Hu Wuyi patent disputes (click on the name of the case to view the full text of the decision): "Although Hu Wuyi will be its ZL91104618.6 invention patent licensing Changsha Electric Welding Clamp Factory Co., Ltd. implementation, and agreed to a year's royalties commission of not less than 100,000 yuan, but the Ltd.'s legal representative Wang Jinjin was Hu Wuyi's wife, and Hu Wuyi held more than 65% of the company's shares, so the company and Hu Wuyi clearly had a relationship of interest. Therefore, the trial court that reference to the patent license fee multiplier to determine the amount of compensation is obviously unreasonable, and according to the category of the patent right, the infringer to produce the infringing products of the time as well as the patent technology for infringement of the role played by the infringement of profit and other factors, discretionary determination of the amount of compensation for 30,000 yuan is not improper."
Xu Guang et al. and Beijing Wucai Jinghong Trade Center et al. Infringement of Invention Patent Right Dispute (click on the name of the case to view the full text of the decision): "In this case, Xu Guang requested compensation of 500,000 yuan on the basis of the licensing fee of his patent, but since he was also the legal representative of Tianya, the trial court did not use the patent licensing fee as the basis for determining the amount of compensation It is not improper."
Sichuan Yinglun Ceramics Co., Ltd. and Fujian Jinjiang Jincheng Ceramics Co., Ltd. infringement of design patent disputes (click on the name of the case to view the full text of the decision): "Although Jincheng Ceramics Co. and the patentee signed the Patent Implementation License Contract, but the patentee Chen Limin is the general manager of Jincheng Ceramics Co. the two sides have an interest in the case, and the Jincheng ceramics company also has no evidence to prove that the agreed patent license fee has actually paid, the trial court accordingly did not "patent implementation license contract" in the agreed patent license royalties, as a reference to determine the amount of compensation for patent infringement in this case, but in the comprehensive consideration of the type of patent involved, the nature of the infringement and the scale of the enterprise, the production of the product involved, sales and use of the circumstances, to determine the Yinglun ceramics The company should bear the compensation amount of 80,000 yuan, and is not obviously improper."
Anhui Yitong Ruiheng electric power equipment Co., Ltd. and guangdong Rizhao new technology application Co., Ltd., Luo Zhizhao infringement of invention patent disputes (click on the name of the case to view the full text of the decision): "in this case, the loss of the right holder and the infringer gained the benefit is difficult to determine, Luo Zhizhao will be the patent in question licensed to guangdong Rizhao company use, because the licensor and the licensee The licensor has a related relationship with the licensee, it is difficult to determine whether the patent license royalty has authenticity and reasonableness, therefore, it is also not possible to determine the amount of compensation in this case by referring to the multiplier of the patent license royalty."
Two, the application of the patent law, article 65 notes
For the foregoing judicial practice, the author believes that in the application of the patent law, article 65, should pay attention to the following key points:
(a) compensation for the application of the standard mandatory sequentiality
In the author's view, patent infringement, the court shall be strictly in accordance with the standard of compensation in order, namely The loss of the right holder, infringement profits, patent license fee multiplier and statutory compensation. The judge does not have any discretion in applying the order of precedence.
The hunan high court ruling that, article 65 of the use of "reference" expression, that is to say, the application of the law is not mandatory, in the case of the right to identify the loss and infringement of the profits, even if the patent license fee evidence, the court can apply directly to the statutory damages, which I do not agree with, because:
The court may also apply to the patent license fee multiplier. Because:
First of all, the interpretation of the law should be interpreted from the text, the provisions of Article 65, in the text, has shown that there is a progressive order. In addition, the supreme people's court on the trial of patent disputes on the application of law (hereinafter referred to as "provisions") article 21 also provides that "no patent license fee can be referred to or patent license fee is obviously unreasonable, the people's court can be based on ...... ", the expression is also clearly expressed, only in the front of the compensation standard is not supported by evidence, the court can apply the statutory compensation.
Secondly, China's civil compensation pursues the principle of filling, in the court can identify the patentee's loss, when the judgment should be made accordingly. The patentee's loss, infringement profits and patent license fee multiplier, is precisely the objective presentation of the patentee's loss. In order to implement the principle of comprehensive compensation of intellectual property judicial policy, based on the characteristics of the patent intangibility, the law to make statutory compensation provisions, to a certain extent can be said to be a last resort. As a last resort, that means in the case of the patentee's loss can be identified, should be prioritized to apply other compensation standards.
(ii) the patentee can not be too heavy burden of proof
The patent license contract, no payment of royalties, can not apply the standard; patent license contract, payment of royalties, but the parties to the contract have an interest in the two parties, can not apply the standard; the patent license contract, payment of royalties, no interest, and payment of royalties is not obviously unreasonable. Payment of royalties is not obviously unreasonable circumstances, but the law does not require the mandatory application of standards, the same shall not apply.
The foregoing is the current judicial practice in the application of standards for refusing to reason, in terms of the patentee, I think it is too harsh, and even can be said to be pressed. The general feeling is that even if the patentee has a lot of effort, he cannot predict the legal outcome of his claim.
In the author's view, in the patentee's claim to standardize the calculation of compensation for damages, the patentee must bear the burden of proving only two: the patent implementation of the contract objectively exists in accordance with the law; the patent royalties based on the contract has been strictly fulfilled. In real life, many scientific and technological research and development enterprises or shareholders are mostly patentees. After the patent authorization, licensing to their own enterprises, which is a common phenomenon, the court can not a line there is an interest, accordingly directly deny the authenticity of the patent license contract. In addition, the provisions of article 21 of the "patent license fee is obviously unreasonable", the author believes that for the fact that the burden of proof should be borne by the accused infringer, the accused infringer as the industry operators, it is fully capable of proving the fact. At the same time, according to the principle of good faith, in the accused infringer is unable to prove that the use of the fee is obviously unreasonable, it can ask the court based on the evidence of infringement of the amount of compensation, and the evidence of the accused infringer is readily available.
In addition, according to the provisions of the Contract Law, the patent license contract record is not a necessary condition for the contract to take effect, so whether to the State Intellectual Property Office for the record and the authenticity of the patent license fee is not necessarily related.
Finally cited a case, the paper statement is very good to support the author's views:
Zhongshan baby good daily-use products limited company and the good boy children's products limited company infringement of design patent dispute (click on the name of the case to view the full text of the decision): "the court that the good boy company provides a first instance of the company and the small dinosaur The Court finds that the evidence provided by Goodbaby in the first instance, such as the Patent License Contract signed between Goodbaby and Tiny Dinosaur on April 18, 2006 and filed with the State Intellectual Property Office, as well as the bank statements, invoices and tax certificates of both parties to fulfill the contract, are sufficient to prove that the Patent License Contract between Goodbaby and Tiny Dinosaur has been practically fulfilled. In the absence of contrary evidence provided by Baby Good Company to disprove the authenticity of the Patent License Contract in question and to prove the existence of a controlling relationship between Goodbaby Company and Tiny Dinosaur Company, the Court of First Instance did not err in determining the amount of damages in this case to be 500,000 Yuan with reference to the royalty of the patent license."
Third, intentional infringement of the applicable standards
Provisions of Article 21 of the "reference to the patent license royalties of one to three times the amount of compensation reasonably determined". The "multiple" referred to in this article shall be one to three times the patent license fee. The reason why the multiplier should be at least one times higher is that the royalty is generally lower than the benefit derived by the licensee from the implementation of the patent. Normal patent license contract usually has the nature of win-win situation, the license contract of both sides can through the implementation of the patent and profit, it is not possible to agree to the licensee will implement the patent to the patentee to obtain all the proceeds, otherwise the licensee agreed to enter into the licensing contract does not have any significance.
So when should be higher than double the damages awarded? The author believes that the patent infringement situation, especially in the case of willful infringement, should be more than double the damages. As early as June 12, 2001, "the supreme people's court vice president CaoJianMing in the national court of intellectual property rights trial work conference speech" in the case of intentional infringement, should be in accordance with the standard of 1 times more than 3 times the following royalties to calculate the amount of compensation. In addition, for intentional infringement, the people's court may determine the amount of compensation in accordance with factors such as the circumstances, scale, and damaging consequences of the infringement, at a rate of more than one and less than three times the amount determined in accordance with the above method. In Article 68 of the Draft Revision of the Patent Law (Draft for Review) published by the Legislative Affairs Office of the State Council on December 2, 2015, "For intentional infringement of patent rights, the people's court may determine the amount of compensation in accordance with the circumstances of the infringement, the scale of the infringement, the consequences of the damages, and other factors, at a rate of more than double and less than triple the amount determined in accordance with the aforesaid method. "