Journal of Intellectual Property (J Intellect Property; JIP)

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OPEN ACCESS, PEER REVIEWED

pISSN 1975-5945
eISSN 2733-8487
Research Article

Convoyed Sales and Damage Calculation in Patent-Infringement Litigation

Professor, School of Law, Korea University, Republic of Korea

Correspondence to Youngsun Cho, E-mail: soaring@korea.ac.kr

Volume 19, Number 3, Pages 1-19, September 2024.
Journal of Intellectual Property 2024;19(3):1-19. https://doi.org/10.34122/jip.2024.19.3.1
Received on May 01, 2024, Revised on May 27, 2024, Accepted on September 03, 2024, Published on September 30, 2024.
Copyright © 2024 Korea Institute of Intellectual Property.
This is an Open Access article distributed under the terms of the Creative Commons Attribution-NonCommercial-NoDerivatives (https://creativecommons.org/licenses/by-nc-nd/4.0/) which permits use, distribution and reproduction in any medium, provided that the article is properly cited, the use is non-commercial and no modifications or adaptations are made.

Abstract

This study focused on the lost sales of ancillary products or services (hereinafter, “ancillary products”) in damage calculation. The precedent and practice that excludes the lost sales of ancillary products from the application of Article 128 of the Patent Act should be reconsidered; if the sales of ancillary products could have been attributed to the holder of the patent rights “but for” the infringement, lost profits of the ancillary products should be included in the calculation of the full damage. If it is reasonably foreseen that the sales of ancillary products are concomitant to the sales of patented products, Article 128 shall be applied as if both products are analogous to “whole part v. component part.” Meanwhile, the burden of proof in overturning this assumption shall be on the infringer who is disputing the damage amount. The study discussed the legal consequences of applying Article 128 (2), (4), and (5) to various potential case types, as well as the comparative situations of some other countries in terms of this issue. Considering the recent trend of various online business models offering clients patented primary services for free and pursuing secondary profits from paid ancillary services or advertisements, this study also proposed the analogical application of Article 128 to the patent infringement of these online businesses, including the associated lost profits of ancillary services.

Keywords

patent, infringement, damage, convoyed goods, sales, lost profit, royalty, foreseeability, internet platform

Notes

Conflicts of Interest

No potential conflict of interest relevant to this article was reported.

Funding

The author received manuscript fees for this article from Korea Institute of Intellectual Property.

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