Monday, December 22, 2008

Accounting of Profits CIPR Article...

Just cleaning up my office, and I don't think I ever posted about this article coming out...

Accounting of Profits in Intellectual Property Cases in Canada (2007)

Norman Siebrasse, Alexander Stack, and the Cole & Partners IP Litigation Support Group
(2008) Vol 24 No. 1 Canadian Intellectual Property Review, pp 83-136

We (members of Cole & Partners and I) first published an article on this topic in 2001. New with this version is the addition of Norman Siebrasse as an author, which brought another dimension and perspective to the article.

This is an update - and the law has arguably moved quite a bit since 2001, particularly in light of the Supreme Court of Canada decision in Schmeiser. The remedy portion of the Schmeiser decision arguably (and I personally think quite probably) points out that the proper measure of an accounting of profits is the difference between

"the defendant's profit attributable to the invention and his profit had he used the best non-infringing option"

and not

"expenditures made to produce and sell the infringing articles and the receipts therefrom".

Since the accounting of profits (and not damages - sorry, that's a pet peeve of mine ;) ) is traditionally the main monetary remedy for patent infringement in Canada, the remedy section of the Schmeiser decision may end up being of greater long term importance than all that fussing about genes, cells and canola ;).

An earlier version of this article is available on the Cole & Partners website .

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