Biotech中國Court CasesCourtsPatent LawPharma
2022年6月16日

What Kind of Damage Awards Can You Get in China?

Is it worth filing for a patent in China? What kind of damage awards can you get?

Pharma companies care more about injunction than damage awards, since it’s quite unlikely that any damage award can compensate for the large amounts of money that may be lost for patent infringement. Chinese courts often issue injunctions in pharma patent litigations (both by the court and administrative enforcement bureaus), though damage awards are possible too.

Although not all court cases are publicly available, there have been some recent published cases with pretty high damage awards, ranging from $750K USD to $25M USD. Keep in mind these are cases litigated under the old patent law, where punitive damages did not exist. Going forward, as punitive damages of up to five times are now part of the new patent law, future damage awards are likely to be even higher.

Uncooperative Defendants? Patentees Can Provide Evidence of Profits

In 2021, the Supreme People’s Court (SPC) awarded a $20 Million RMB ($3 Million USD) damage amount to a Swiss medical device company Synthes GmbH for patent infringement by a Chinese medical device company. The patent related to a medical device for treating femoral fractures which consisted of “a main nail” and “a bone fixation element.”

This particular case is interesting because the Court calculated the damage amount by relying on the patentee’s reasonable assessment of the profits, using evidence such as the infringer’s prospectus reporting the company’s annual operating profits. The court determined that the defendant did not adequately disclose its true profits (e.g., they claimed most of the receipts were “lost” or “missing”). Accordingly, the final assessed profits were based on information provided by the patentee, resulting in this very large $3 Million USD damage award.

Largest Damage Award 2021

The largest damage award of 2021 that we found based on publicly available records was $167 Million RMB ($25M USD), for infringement of a patent originally filed by Toshiba (sold to Oaks Engineering) for an air conditioning compressor. In October 2021, the Intermediate Court ruled that the defendant’s prior art defense was not valid, and proceeded to award a $167M RMB damage award to the plaintiff (Oaks) for patent infringement. The defendant may appeal, so this case is still not over yet.

Pharmaceutical Cases

A recent life science case from 2021 involving a patent covering a fermentation process for synthesizing dibasic acids had a $5 Million RMB award. In general, most successful pharmaceutical cases result in permanent injunctions.

Willful Damages

Willful damages were just added to the patent law in June 2021, and thus the number of judgments will inevitably be lower than in a typical full year. We have not yet found any published cases, though official Chinese Court communications indicate that in 2021 courts across China handled 642,968 IP cases, and awarded punitive damages in 895 cases (0.13% of cases).

About the Authors

Jennifer Che, J.D. is Vice President and Principal at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

Yolanda Wang is a Principal, Chinese Patent Attorney, and Chinese Patent Litigator at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.

其他文章

The Latest on Post-Filing Data in China’s Patent Law

2020年4月29日
Post-filing data can sometimes be the crucial difference between a patent allowance and a final rejection. The reasons are endless why important data may not have been included in the original patent application as filed. Time and budget may have been insufficient to generate data over the full scope of the claims at the time […]

Inventive Step for an Enantiomer over a Racemate: “L-ornidazole” Patent Invalidation Case

2023年11月27日
Each year, China’s Supreme People’s Court (SPC) issues its annual “Judgment Digests”, which includes a list of “48 typical cases” highlighting representative SPC decisions in the previous year. The Judgment Digests help us understand more about the SPC’s judicial ideology, trial concepts, and adjudication methods in dealing with difficult and sophisticated legal issues as well […]

AI, Big Data, and Blockchain - CNIPA seeks public comment on draft patent examination guidelines

2019年11月21日
Exciting new changes continue to happen with the Chinese Patent Office (CNIPA). On November 12, 2019, the CNIPA published a new set of amendments to Part II Chapter 9 of the Patent Examination Guidelines (“Draft”) and requested public comment by December 11, 2019. In summary, the new guidelines clarify how emerging technologies involving artificial intelligence, […]
Tapentadol.svg

Polymorph Patents in China: What is the Standard for Inventiveness for New Crystal Forms?

2020年7月14日
This case is focused on polymorphs, namely what are the standards for novelty and inventiveness when it comes to new crystal forms of a known drug? A recent Supreme People’s Court decision in China is illustrative of the way Chinese courts are thinking about polymorph patents in China. Grünenthal is a German pharmaceutical company and […]

我們過去活動

Top crossarrow-right