POLAND Law and Practice Contributed by: Krystyna Szczepanowska-Kozłowska, Marcin Ziarkowski, Krzysztof Popławski and Kacper Sobolewski, A&O Shearman
5.4 Damages General Considerations Two main pecuniary claims can be raised against a patent infringer. The first is a classic claim for damages where the claimant is required to demonstrate that: • the infringement is attributable to the infringer (it was either intentional or caused by the infringer’s negligence); and • damage was inflicted on the claimant, and that damage is a result of the infringement (there is a so-called ordinary/adequate causal relationship between the two). Both the actual damage (damnum emergens) and hypothetical but highly probable lost profits (lucrum cessans) are subject to compensation. The claimant should demonstrate the value of the damages, which is especially troublesome with respect to lost profits. The claimant may also choose to have the compensa ‑ tion calculated as an amount of a hypothetical licence fee or other remuneration that would have been due for authorising the infringer to exploit the invention (reasonable royalty). The second claim is for the handover of any benefits unlawfully obtained by the infringer (corresponding to the “recovery of profits” as described in Article 13 (2) of Directive 2004/48/EC). Therefore, this is not exactly a claim for hypothetical profits lost by the pat ‑ ent holder (or by the licensee) but for the infringer’s actual profits resulting from the unlawful exploitation of the invention. It is not clear, however, to what extent the infringer is allowed to deduct their expenses, ie, whether the claim is limited to the infringer’s net profit or whether it extends to all the income generated from exploiting the invention. The claim to hand over unlaw ‑ fully obtained benefits does not require the claimant to demonstrate damage on their side and does not depend on whether the infringement is attributable to the infringer. The claim for damages and the claim for unlawfully obtained benefits are independent and can be raised together. However, the court will likely limit the dam ‑
main action; failure to meet this deadline causes the injunction to lapse. It is possible to obtain an order suspending the enforceability of a granted PI pending appeal; how ‑ ever, this is entirely at the court’s discretion. 5.2 Final Injunctive Relief Final injunctions are enforceable after the court’s rul ‑ ing becomes final, which means it is not subject to further appeal or cassation. However, the court may order the immediate enforce ‑ ability of the final injunction, even if it is still appeal ‑ able if it finds that the delay will impede or seriously obstruct the enforcement of the judgment or put the claimant at risk of harm. In such cases, the court may also require the claimant to provide a bond to cover the defendant’s potential damages if the final injunc ‑ tion is reversed or modified on appeal. The enforcement of the final injunction is based on the enforceable ruling and an enforcement clause issued by the court. Enforcement of final injunctive relief, for example a prohibition on placing patent infringing products on the market, is carried out by the court acting in an enforcement capacity, which may impose a penalty on the infringer for breaching that prohibi ‑ tion. 5.3 Discretion to Award Injunctive Relief (Final or Preliminary) The court may award damages in lieu of a final injunc ‑ tion: • at the infringer’s request; • if the infringement was not culpable (ie, neither intentional nor negligent); • where awarding the injunction would place an undue burden on the party subject to it; and • only if pecuniary compensation is sufficient to sat ‑ isfy the infringed party’s interest. In practice, the applicability of this measure is fairly limited, and Polish courts rarely use this discretion. While deciding on a PI, the court is always under a general obligation not to place an undue burden on the party subject to the injunction.
186 CHAMBERS.COM
Powered by FlippingBook