Non-Infringing Alternatives: Moving Beyond Condemnation to Arrive at Compensation
The Canadian Intellectual Property Review (CIPR) is a double-blind peer reviewed journal. It is sent to over 1,800 IPIC members at no cost and can be purchased by non-members for a fee. If you would like to browse the articles included in the CIPR, please consult our database below.
Any author, member or non-member can submit an article for consideration in the CIPR. The CIPR Editorial Board welcomes both short pieces (2,000 to 5,000 words) that may be included in the Notes section of the issue or longer, more in-depth articles. The maximum length of articles, including references, is 20,000 words. Articles may be submitted in French or English. Each article should be accompanied by a 150-word abstract.
All submissions undergo a double-blind review process: the reviewers are not given the authors' identities and the identities of the reviewers are shielded from the authors. Additionally, articles submitted must be original and must not have been previously published elsewhere.
If you would like to submit an article for an upcoming issue of the CIPR please contact admin@ipic.ca.
Canadian Intellectual Property Review
Share
Non-Infringing Alternatives: Moving Beyond Condemnation to Arrive at Compensation
Issue: Volume 33
Author(s): Jim Lepore
Abstract:
Judgments on remedies for patent infringement are rare, and contested judgments even rarer. Among these contested judgments, none are more controversial than those reducing monetary remedies on the basis of non-infringing alternatives (acceptable substitutes for a claimed invention that do not infringe the claimed invention).
In Canada, both of the monetary remedies available for patent infringement, damages and accounting of profits, consider non-infringing alternatives at the causation stage of analysis. The causal analysis requires the construction of a hypothetical “but for” world where the infringement did not occur, for comparison with the actual position of the parties. Infringers assert that “but for” the infringement, a legal noninfringing alternative would have been used, and the patentee would be in the same or similar position as the patentee is in now—thereby reducing the monetary remedies.
As the law in Canada now stands, a non-infringing alternative is relevant to the quantification of remedies only insofar as such an alternative is actually available. Put another way, a non-infringing alternative that is theoretical, but feasible, is irrelevant. This article argues that feasible non-infringing alternatives should be included in the quantification of remedies because their inclusion is more consistent with the objective of the Patent Act—namely, appropriate compensation and appropriate disgorgement.
