Before filing for a civil litigation claim, the claimant must think carefully what are the potential remedies that may be awarded. Here are the commonly sought remedies in an intellectual property claim:
Injunction
In intellectual property actions, it is quite common to apply for an injunction as part of the claimant’s actions. An injunction is a judicial order that restrains a person from performing specific actions. It is practical as you would like the patent infringer to stop abusing your intellectual properties without your consent. In the context of a patent claim, you would request the defendant to stop using your invention or any parts of its manufacturing process that are protected by your patent.
Damages
If the infringer abuses your invention in a way that has caused a negative impact to your business, you may apply for financial compensation for that loss.
In exceptional circumstances, the government may require patent holders to suspend their exclusive right to patents to cater to emergency situations. For example, the government may grant compulsory licenses to pharmaceutical companies to produce generic drugs for the purposes of controlling the spread of epidemics. Section 71 of the Patent Ordinance provides that the compensation for those patent holders would be measured by loss of profit.
Account for Profit
If an infringer abuses your invention and profited from it, you may apply to the court to recover the profits earned by the infringer.
Key Takeaways
1. A prospective patent claimant should think about the potential remedies before bringing a claim against the alleged infringer
2. There are three common types of remedies sought by patent owners: Injunction, Damages, and account for profit
3. Government may also suspend the patent holder’s exclusive right to cater to emergency situations. The financial compensation is measured by loss of profits in Hong Kong.
Relevant Hong Kong Laws
Remedies for patent infringements are provided by section 80 of the Patents Ordinance. For groundless patent infringement claims, a defendant may counterclaim against the claimant under section 89 of the Patent Ordinance.
Bibliography
Intellectual Property Department, “Enforcing IP: Legal remedies against infringers”, <https://www.ip.gov.hk/en/legal-remedies.html>