Answer ... Yes, both interlocutory and permanent injunctions are available in Australian patent infringement cases.

Answer ... Interlocutory injunctions: An interlocutory injunction is sought at the outset of a case to preserve the position pending final determination of the case. For an interlocutory injunction to be granted, the court must be of the view that:

• there is a serious question to be tried;
• damages will be an inadequate remedy; and
• the balance of convenience and justice favour grant of the injunction.

Whether there is a serious question to be tried will depend on the strength of the applicant’s case as established in affidavits filed in support of the interlocutory injunction application. The applicant need not show that it will succeed at trial, but rather that it has a reasonably arguable case. Where the other factors relevant to the grant of an interlocutory injunction are relatively evenly balanced, the strength of the applicant’s case may gain more significance (Samsung Electronics Co Limited v Apple Inc [2011] FCAFC 156).

The sufficiency of damages is assessed by the court by considering whether, in the absence of an injunction being granted, damages would constitute an adequate remedy if it is ultimately shown that the respondent is infringing the applicant’s rights. Damages may not be an adequate remedy for a number of reasons, such as difficulty in quantifying damages on the facts or the potential insolvency of the respondent if infringement is successfully argued.

In determining the balance of convenience and justice, the court will consider and weigh up the harm that could be suffered by the applicant, the respondent and, where relevant, third parties if an interlocutory injunction were granted. The status quo may also be relevant to assessment of the balance of convenience.

An applicant for an interlocutory injunction must provide an undertaking as to damages, which requires it to compensate the party against which the injunction is sought if the applicant is ultimately unsuccessful at final trial. Such damages can often be substantial and are an important consideration in determining whether to seek an interlocutory injunction.

Permanent injunctions: Permanent injunctions which prohibit a respondent from engaging in specific activities in relation to a patent for the duration of its remaining term are usually imposed by the court where patent infringement is established by an applicant.

Answer ... Yes. Generally speaking, a successful party in a patent infringement action will be entitled to elect between damages (other than in cases of innocent infringement, as referred to in section 6.4) and an account of the infringer’s profits received as a result of the infringing activity.

Quantification of damages is usually separated from determination of liability for infringement. This ensures that the court and parties do not expend resources on determining the quantum of damages if no liability for infringement is found. The question of quantum is often resolved between the parties without hearing to avoid the expense of further litigation.

Answer ... Damages available for patent infringement cases can broadly be divided into compensatory damages and additional damages. The nature of additional damages is outlined in question 9.6. As an alternative, the applicant can elect an account of profits. The court may grant a request for discovery to aid the patent owner with this election.

Damages are most frequently calculated by reference to lost sales as a result of the infringing conduct and/or lost licencing fees where the applicant is not selling products or services itself. A patentee seeking damages based on lost sales must identify and justify classes of sales which it would have been able to make had the infringement not occurred. Difficult issues may arise as to how many of the sales made by the infringer would have been made by the patentee but for the infringement. Similarly, where the patentee would otherwise have licensed the infringer, damages may be calculated on the basis of a lost licence fee.

In some cases the Australian courts have also applied the ‘user principle’ when determining damages for intellectual property infringement, granting damages on the basis that even if the above heads of damage cannot be made out, the infringer should pay something for its use of the relevant intellectual property. The jurisprudence in this area is still developing.

Answer ... See question 9.2.

Answer ... The court has the discretion to award additional damages which go beyond merely compensating the patentee for actual damage suffered. The amount of additional damages that a court can reward is not limited by statute. Case law suggests that additional damages are not available if the patentee chooses to obtain an account of profits from the infringer.

In exercising its discretion in determining whether additional damages should be awarded, the court must consider:

• the flagrancy of the infringement;
• the need to deter similar infringement;
• the conduct of the infringer after infringement or after being informed of the alleged infringement;
• the benefits that resulted from infringement; and
• all other relevant matters.

Additional damages can significantly increase the overall award of damages in circumstances where actual loss of the patentee is relatively limited, but the respondent’s behaviour is determined by the court to justify additional damages.

Answer ... Liability for patent infringement is confined to civil liability in Australia.

Answer ... Criminal sanctions, including fines and imprisonment, may be imposed for failure to comply with court orders. However, these sanctions are not specific to patent infringement cases and there is no criminal liability for patent infringement per se.

Answer ... Yes, the usual rule is that the successful party will be awarded its costs. Costs may be apportioned as appropriate, based on factors such as whether the party is only partially successful and whether its conduct during litigation warrants specific costs being awarded against it.

Answer ... The successful party is usually entitled to its costs on what is known as a party/party basis. The final sum of costs can be determined by a process known as ‘taxation’. In most circumstances, the party/party costs that are ultimately awarded represent approximately 50% to 75% of the actual legal costs of the successful party.

In exceptional circumstances, the court may award costs on an indemnity basis, which entitles that party to the full amount of its legal costs.