In judicial practice, the court strictly examined the patent license contract submitted by the patentee and the related patent license fee payment voucher.
(a) Even if there is sufficient evidence to prove the use of the patent license, the court has the right to choose legal compensation.
In the case that the patentee has submitted sufficient evidence to the court for permission to use the patent, the judge still has the right to refuse to apply the standard, such as:
Changsha Hongxing Construction Engineering Co., Ltd. v. Qiu Zeyou and other patent infringement disputes (click the name of the case to view the full text of the judgment document): "Our hospital believes that although the license contract involved in the patent in this case has been filed and actually partially fulfilled, the license fee itself is not obviously unreasonable, but the relevant laws and judicial interpretations do not stipulate that' if there is a patent license fee, the amount of infringement compensation must be determined by reference to its reasonable multiple'." "
(2) There is no proof of payment of patent license fee.
In litigation, the patentee often submits the patent licensing contract signed with the outsider, but there is no proof that the licensee actually paid the patent royalties. Based on this, the court believes that there are problems with the authenticity of the contract, such as:
Ye Jiedong and Yueqing Su Rong Electric Appliance Co., Ltd. infringed on the patent right of utility model (click the name of the case to see the full text of the judgment document): "Regarding the probative effect of the filing certificate of the patent license contract submitted by Ye Jiedong in the original trial, although the patent license contract signed by Ye Jiedong and Shanghai Xiangzhou Electric Equipment Co., Ltd. was approved by China National Intellectual Property Administration for filing, Ye Jiedong could not prove that the patent license fee had actually been paid, so the patent license fee contained in the contract could not be used as the basis for calculating the amount of infringement compensation."
Cheng Runchang v. Guilin Hexin Industrial Co., Ltd. and Gong Judong (click on the name of the case to view the full text of the judgment): "In this case, Cheng Runchang did not provide evidence to prove that he signed a patent licensing contract with others, let alone the patent licensing contract filed in the Patent Office and the certificate that the licensee paid the licensing fee. Therefore, Cheng Runchang takes the patent technology transfer fee as the basis for calculating his losses. This calculation method lacks factual basis and will not be adopted by our hospital. "
Shishi city Xinjia Electronics Co., Ltd. v. shishi city Longsheng Plastic Electronics Co., Ltd. (click the name of the case to view the full text of the judgment): "Xinjia Company renewed the patent license contract with the patentee Li Ren, but Xinjia Company did not provide the payment certificate of the patent license fee involved, which proved that it had paid the patentee Li the license fee agreed in the contract of 65,438+500,000 yuan; There is no evidence that the contract has been registered in China National Intellectual Property Administration within the statutory time limit. Moreover, the patentee Li is the legal representative of Xinjia Company and an interested party. Therefore, it is not appropriate to refer to the patent license fee agreed in this contract to determine the amount of compensation. "
(3) Both parties to a patent licensing contract have an interest.
In many judgment documents obtained, the court often thinks that there is an interest relationship between the two parties to the contract, because the patentee of the patent licensing contract is the legal representative or shareholder of the licensed company, even if the contract is filed in China National Intellectual Property Administration according to law after signing, and there is proof of actual payment of patent royalties, the court will not recognize it, such as:
Ningbo Baofeng Measuring Tools Co., Ltd. v. Hu Wuyi (click the name of the case to view the full text of the judgment): "Although Hu Wuyi licensed his invention patent to Changsha Electric Welding Clamp Factory Co., Ltd. for implementation, and agreed that the annual usage fee should not be less than 65,438+10,000 yuan, Wang Jin, the legal representative of Changsha Electric Welding Clamp Factory Co., Ltd., is Hu Wuyi. Therefore, the court of first instance held that it is obviously unreasonable to determine the compensation amount by referring to the multiple of the patent license fee. According to the type of patent right in this case, the time when the
Guangxu et al. and Beijing Cai Wujinghong Business Center (click on the name of the case to view the full text of the judgment document): "In this case, Guangxu requested compensation of 500,000 yuan on the basis of its patent license fee, but as it is also the legal representative of Tianya Company, it is not improper for the court of first instance not to use the patent license fee as the basis for determining the amount of compensation."
Sichuan Yinglun Ceramics Co., Ltd. and Fujian Jinjiang Jincheng Ceramics Co., Ltd. (click the name of the case to view the full text of the judgment): "Although Jincheng Ceramics Co., Ltd. signed a patent license contract with the patentee, the patentee Chen Limin is the general manager of Jincheng Ceramics Co., Ltd., and both parties have an interest. Jincheng Ceramics Co., Ltd. has no evidence to prove that the agreed patent license fee has actually been paid. On this basis, the court of first instance did not refer to the patent license fee agreed in the patent license contract to determine the amount of patent infringement compensation in this case, but comprehensively considered the type of patent involved, the nature of infringement and the scale of the enterprise, as well as the production, sales and use of the products involved, and determined that the amount of compensation that British ceramics companies should bear was 80,000 yuan, which was not obviously inappropriate. "
Anhui Yitong Ruiheng Power Equipment Co., Ltd. v. Guangdong Rizhao New Technology Application Co., Ltd. and Luo (click the name of the case to view the full text of the judgment): "In this case, the loss of the obligee and the benefit of the infringer are difficult to determine. Luo licensed the patent involved to Guangdong Rizhao Company. Because of the relationship between licensor and licensee, it is difficult to determine whether the patent license fee is true and reasonable. Therefore, it is impossible to determine the amount of compensation in this case by referring to the multiple of the patent license fee.
Two. Matters needing attention in applying Article 65 of the Patent Law
In view of the present situation of judicial practice, the author thinks that the following points should be paid attention to when applying Article 65 of the Patent Law:
Mandatory order of applying compensation standards
The author believes that once the patent infringement is established, the court should strictly follow the compensation standard in turn, that is, the loss of the obligee, the profit from the infringement, the multiple of the patent license fee and the statutory compensation. Judges have no discretion in applying this order.
According to the judgment of the Higher People's Court of Hunan Province, the expression "reference" is used in Article 65, which means that the application of the law is not mandatory. In the case that it is impossible to find out the loss and infringing profit of the obligee, even if the evidence of the patent license fee is conclusive, the court can directly apply the statutory compensation. I beg to differ, because:
First of all, legal interpretation should start with literal interpretation, and the provisions of Article 65 have shown a progressive order in word expression. In addition, Article 21 of "Several Provisions of the Supreme People's Court on the Applicable Law in the Trial of Patent Dispute Cases" (hereinafter referred to as the "Provisions") also stipulates that "if there is no patent license fee to refer to or the patent license fee is obviously unreasonable, the people's court may use it according to ……", which also clearly stipulates that the court can apply statutory compensation only if the compensation standard is not supported by evidence.
Secondly, China's civil compensation follows the principle of flat filling, and the court should make a judgment accordingly when it can find out the loss of the patentee. The loss of the patentee, the profit from infringement and the multiple of patent license fee are the objective manifestations of the loss of the patentee. In order to implement the comprehensive compensation principle of intellectual property judicial policy, based on the intangible characteristics of patents, it is inevitable that the law makes statutory compensation provisions to some extent. To do it as a last resort means to give priority to other compensation standards when the loss of the patentee can be determined.
(2) The excessive burden of proof cannot be shifted to the patentee.
There is a patent licensing contract, and there is no evidence to pay the patent royalties, so the standards cannot be applied; There is a patent licensing contract and a certificate of payment of patent royalties, but the parties to the contract are interested and the standards cannot be applied; There is a patent license contract, and there is no evidence to pay the patent royalties. There is no interest, and there is no obvious unreasonable situation in paying royalties. However, the law does not require mandatory application of standards, nor does it apply.
These are the reasons why the current judicial practice refuses to apply this standard. As far as the patentee is concerned, the author thinks it is too harsh, and it can even be said that it is pressing step by step. Generally speaking, the patentee can't predict the legal result of his claim even if he tries his best.
The author thinks that when the patentee claims to calculate compensation according to the standard, the patentee only needs to bear two burdens of proof: the patent licensing contract exists objectively according to law; Royalties have been performed in strict accordance with the contract. In real life, most of the directors or shareholders of many R&D technology enterprises are patentees. After the patent is granted, it is a common phenomenon to license it to one's own enterprise. The court cannot directly deny the authenticity of the patent licensing contract on the grounds of the existence of interests. In addition, Article 21 of the Regulations stipulates that "the patent license fee is obviously unreasonable". The author believes that the burden of proof should be borne by the accused infringer, who, as an industry operator, is fully capable of proving the facts. At the same time, according to the principle of good faith, if the accused infringer can't prove that the royalties are obviously unreasonable, he can completely ask the court to determine the compensation amount based on the evidence of infringement profit, which is readily available to the accused infringer.
In addition, according to the provisions of the Contract Law, the filing of patent licensing contracts is not a necessary condition for the contract to take effect, so whether to file with China National Intellectual Property Administration is not necessarily related to the authenticity of patent licensing fees.
Finally, a case is cited, which well supports the author's above viewpoint:
Zhongshan Baby Daily Products Co., Ltd. and Good Baby Children's Products Co., Ltd. infringed on the patent right of design (click the name of the case to see the full text of the judgment document): "We believe that the patent license contract signed with Little Dinosaur Company on April 18, 2006 and filed in China National Intellectual Property Administration, as well as the bank receipt, invoices and tax payment vouchers for both parties to fulfill the contract, are enough to prove that the patent license contract between Good Baby Company and Little Dinosaur Company has actually been fulfilled. In the case that Baby Good Company did not provide evidence to the contrary to overturn the authenticity of the patent license contract involved and prove that there was a control relationship between Baby Good Company and Little Dinosaur Company, the court of first instance determined the compensation amount of 500,000 yuan in this case with reference to the patent license fee, which was not improper. "
Third, the impact of intentional infringement on applicable standards.
Article 21 of the Regulations stipulates that "the amount of compensation shall be reasonably determined with reference to 0 to 3 times of 65438+ patent license fee". The "multiple" mentioned in this article shall be 1 to 3 times of the patent license fee. The reason why the multiple is required to be at least higher than 1 multiple is because the patent fee is generally lower than the income of the licensee's patent implementation. A normal patent licensing contract usually has a win-win nature, and both parties to the licensing contract can benefit from patent implementation. It is impossible to require the licensee to hand over all the benefits obtained from patent exploitation to the patentee, otherwise it is meaningless for the licensee to agree to conclude a license contract.
So when should we award more than double the compensation? The author believes that in the case of intentional patent infringement, compensation should be awarded at least twice. As early as June 200 1 12, Cao Jianming, vice president of the Supreme People's Court, made it clear that the amount of compensation for intentional infringement was calculated according to the standard of 1 times and less than 3 times. In addition, for intentional infringement, the people's court can determine the amount of compensation determined by the above method to be one to three times according to the circumstances, scale and damage consequences of the infringement. In Article 68 of the Revised Draft of the Patent Law (Draft for Review) published by the Legislative Affairs Office of the State Council on February 2, 20 15, "If the patent right is intentionally infringed, the people's court may determine the amount of compensation to be more than one time and less than three times the amount determined by the above method according to the circumstances, scale and damage consequences of the infringement."