A patent infringer must surrender the profit he has made from the patent infringement – even after the limitation period for the liability for damages has expired. In a ruling on a guiding principle the BGH stated that there is a claim for residual damages for this profit and a comprehensive claim for information and accounting.
Restitution of unjust enrichment
The defendant challenged this, in so far as it had been ordered to render accounts, also stating the advertising carried out, the production costs and the profit made for the period barred by the statute of limitations. In its judgment of 26 March 2019 (X ZR 109/16), the Federal Court of Justice now dismissed the appeal and confirmed the judgment of the Court of Appeal.
A liability for damages also extends to the statute-barred period, but limited according to the provisions on the restitution and surrender of unjust enrichment.
BGH confirms the judgment of the Court of Appeal
The Court of Appeal had ruled: The applicant has a claim against the defendant for patent infringement for injunctive relief, information, invoicing and recall and also claims for damages. Irrespective of the limitation of the (unlimited) claim for damages, the defendant must also provide information on the advertising it has carried out, its production costs and the profit made. The limitation of the claim for damages for the period prior to 1 January 2007 had no effect on the scope of the accounting claim. The claim for residual damages under § 141, second sentence, Patent Law in conjunction with § 852 BGB (German Civil Law), which was not time-barred, was not necessarily limited to an appropriate licence fee but could be directed towards the surrender of the infringer’s profit.
Residual damage claim due to unjust enrichment
In § 141, 2nd sentence, German Patent Law (in German: Patentgesetz, PatG), the claim for residual damages by enriching the patent infringer with the words “attained at cost” is based on the act by which the property transfer was effected, i.e. on the patent infringement – from this follows the claim for damages for the use of the intangible object of protection, i.e. the technical teaching of the plaintiff’s patent. Since it is not possible, this technical teaching to receive and deliver as a property, the value is to be replaced in principle according to § 818 exp. 2 BGB .
This is not only a royalty, but also a profit made by the patent infringement. The reference to unjust enrichment by the patent infringement justifies the liability for damages, more precisely a claim for residual damages. For that claim, it is sufficient that the enrichment would have arisen – it is no compensation for a concrete loss incurred. Nevertheless, the claim for residual damages under § 141 (2) Patent Law is linked to a transfer of assets caused by the patent infringement, i. e. an economic advantage of the patent infringer.
Entitlement to billing and information on the advertising
The Federal Court of Justice ruled that the infringer remains obligated to this even after the statute of limitations of the claim for compensation for the damage arising from the infringement has expired. It would not be fair to leave a profit to the infringer based on the culpable unauthorised use of the property right.
Accordingly, the claim to accounting includes, in addition to information on the profit, information on the production costs, which are necessary for the calculation of the infringer’s profit to be surrendered.
The same also applies to information on the advertising carried out, since this allows conclusions to be drawn with regard to the plausibility of the information on sales or the number of units sold. Moreover, the information on the advertising carried out was relatively easy to verify and could also indicate the care with which the accounts were drawn up, ruled the BGH.
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Sources:
Judegement of BGH “liability of damages” X ZR 109/16
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