ACTA Provisions on Injunctions and Damages

KEI has issued a new research note, Comments on ACTA Provisions on Injunctions and Damages, KEI Research Note 2010:1, dated April 6, 2010.

Among other things, the paper details a number of cases where the proposed language in ACTA would require changes in laws in the U.S. and other countries, and would prejudice policy objectives in other areas, or frustrate new legislative initiatives. Among the many examples given are the provisions in the new U.S. health care reform act on injunctions and damages, and the proposals for patent reform and orphan works legislation, which are contrary to the U.S. proposals in ACTA.

The table of contents are as follows:

Table of Contents
I. Introduction 2
II. Context 2
III. Commentary on Injunctions 3
Cases of innocent infringement 4
The Statutory Exceptions to Injunctions Allowed in Article 44.2 of the TRIPS 5
28 USC 1498: Use by or for the government 6
The Safe Harbour exception for uses of patents related to the development and submission of information concerning the sale of drugs or veterinary biologic products. 7
35 USC 271(e)(3) 7
Non-disclosed biological product patents 8
35 USC 271(e)(6)(B-C) 8
The Convention on International Civil Aviation, signed at Chicago, on 7 December 1944 (Chicago Convention) 9
Non-Military uses of nuclear power 10
No injunctions for patent infringement by medical practitioners 10
Areas where policy makers may consider future limits on injunctions. 11
Orphan Copyrighted Works 11
Disclosure of Patents on Standards 11
Foreign restrictions on injunctions for infringement of architectural works 11
IV. Commentary on Damages 12
Standards for the Amount of Damages 16
Innocent Infringements 17
Calculating Damages Under ACTA 18
Relevant US Statutory limitations or guidance on damage awards for infringement 20
Limits on damages for non-disclosed patents on biological products 20
Nuclear Energy 20
Semiconductor Chips 21
Use of patents by Medical Practitioners 21
Use by or for the government 23
Court decisions regarding damages following the U.S. Supreme Court ruling in eBay Inc v. MercExchange, L.L.C. 24
The Senate Patent Reform Compromise 25
The “Suggested Retail Price” is an inappropriate global norm for damages 26
V. TACD Recommendations for ACTA on Injunctions and Damages 27
VI. Proposals for expanding access to orphaned copyrighted works. 28
VIII. The Importance of Liability Rules and the Relationship to Injunctions and Damages in ACTA 33
IX. Secrecy is not appropriate for a negotiation on global standards for injunctions and damages 35

James Love

Director of Knowledge Ecology International, from the Washington, DC office.