(1) Lost Profit
Under Japanese law, a patentee is entitled to compensation of damages calculated
based on the lost profit or the reasonable royalty when his/her patent
is infringed. However, it is usually difficult to prove the lost profit.
Therefore, the law presumes that the profit obtained by the infringer is
the same as the profit that would have been obtained by the patentee but
for the infringement. The amendment has added another way of presumption.
When the patentee is capable of supplying products competing the infringing
product, he/she may presume that his/her lost profit is equal to the amount
calculated by multiplying his/her unit profit with the number of units
sold by the infringer. Thanks to this amendment, the patentee will be no
longer required to prove the profit of his/her opponent.
(2) Reasonable Royalty
Before the amendment, the "Reasonable Royalty" was defined as the royalty
that the patentee would have normally received." Because of the adverb "normally,"
the courts had some difficulty to find a royalty rate as reasonable if
it was higher than those which they found in actually negotiated agreements.
However, if the royalty rate applied to the infringer is lower than or
the same as the ones agreed upon without litigation, honest licensees make
a fool of themselves. Therefore, the conservative approach taken by the
courts was a target of criticism. To encourage the courts to find higher
royalty rates as reasonble, the amendment has deleted the adverb "normally."
(1) Penalty on Corporations
The highest fine to be imposed on a corporation that knowingly infringed
a patent is now 150,000,000 yen.
(2) Prosecution Without Complaint
Before the amendment, criminal prosecution of patent infringement required
a formal complaint by the victim. The amendment has removed this requirement
to allow the police and the public prosecutors to treat patent infringement
in the same manner as they treat trademark infringement, prosecution of
which is at least theoretically possible without a formal complaint even
though such prosecution is, practically speaking, not often made.
Before the amendment, examiners were not allowed to cite a withdrawn application
if it was not published. However, they were allowed to reject a new application
citing an abandoned or rejected application even if it was not published.
Under the amended law, examiners are no longer allowed to cite a prior
application against a new application if it was abandoned or rejected without
publication.
The amendment came into effect as of January 1, 1999.