TIPS^®  Taiwan Intellectual Property Special

Determination of Damage Amount for Patent Infringement

In addition to the provisional injunction, which replaces the police search and seizure for stopping infringing activities, the civil damage claim has become more important than before after the decriminalization of patent infringement.

Article 85 of Patent Law (Article 89 before the Amendment) stipulates how the damages of patent infringement are to be calculated. The patentee may claim his/her damages as suffered due to infringement or the profits gained by the infringer from the infringing activity. The Judicial Yuan (the highest judicial branch in Taiwan) announced “Guidelines for Handling Civil Litigation” on August 26, 2003,” Article 87 of which further specifies the determination of the amount of damages for patent infringement. Where the amount cannot be determined by an objective standard or it is obvious that the determination is difficult, the Court shall consider all the briefs of the case and results of evidence examination, and determine an amount at its discretion, within a scope not against the rules of experience and dialectic. The patentee may request that the court designate the Patent Authority or other appropriate institute to assess the amount of damages, or consider the amount of reasonable royalties that the patentee may obtain from licensing. On the other hand, the Court may also order the infringer to submit documents or information needed to calculate the damages, as the reference for determination.

Besides the actual damages, the Patent Law also allows the patentee to claim the damages to his/her business reputation caused by the infringement. Moreover, in case of willful infringement, the Court may award up to triple damages, based on the severity of the offense.