According to Article 96(2) of the Patent Act, patentees may claim damages for patent infringement which is intentional or which results from negligence. According to Article 120 of the Patent Act, Article 96(2) applies mutatis mutandis to utility model patents. On 22 February 2021 the Intellectual Property Court (IPC) rendered a civil judgment (2020 Min Zhuan Shang Zi 2) which clearly indicates how to determine whether patent infringement is intentional or whether it results from negligence.
The plaintiff owned a utility model patent. The plaintiff alleged that the defendant:
- was liable for damages caused by infringement of the plaintiff's utility model patent; and
- had participated in an exhibition together with the plaintiff and had thus become aware of the patented products, so the infringement was intentional.
The IPC adopted the plaintiff's allegation in the judgment and concluded that the defendant had intentionally infringed the patent. The IPC's judgment regarding how to determine whether the defendant's patent infringement was intentional or resulted from negligence was based on the following logic.
'Intention' can be:
- 'direct intention', whereby an actor knowingly and intentionally causes the circumstances that constitute patent infringement; or
- 'oblique intention', whereby an actor foresees the occurrence of the patent infringement and such infringement is not against the actor's will.
'Negligence' is unintentional. It can be:
- 'unconscious negligence', whereby an actor fails to exercise the duty of care that it should and could have exercised in the circumstances; or
- 'conscious negligence', whereby an actor foresees that the patent infringement may occur but firmly believes that it will not.
In patent infringement cases, the degree of care regarding whether it is feasible to foresee or avoid occurrence of damages for a manufacturer or a competitor in the same trade or business as the patent owner will differ from that of a simple retailer or occasional vendor. To determine whether the actor has breached its degree of care, the facts of the case should be considered, including:
- the scale of the business items and sales revenue of each party;
- the specific content of the infringement; and
- whether there has been any contact between the parties.
Since patents require registration and publication, such information can be acquired by any party. Therefore, when manufacturing and selling products, parties can readily check to avoid patent infringement.
The defendant in this case was an original design manufacturer (ODM) business and had enquired about the plaintiff's ODM needs when they participated together in the exhibition. Further, the plaintiff evidenced that its and the defendant's booths had been close together and exhibition photos clearly showed the plaintiff's products using the patent in dispute. Therefore, all of the technical features of the patent had been revealed and were readily known to the defendant. The IPC found that this was sufficient to adopt the plaintiff's allegation that the defendant's infringement of the patent in dispute had been intentional.
