1. Damages in Patent Infringement Litigation
Judge Türkay Alıca
Ankara 3th IPR Civil Court
St. Gallen
23 May 2014

2. IPR COURTS Civil IPR Courts were established in 2000.
Although, there is a law on courts of appeal, Appellate Courts have not been established yet.
The Supreme Court has no specialized Chamber on IPR.
Limited provisions concerning proceedings included in the IPR Laws.
Civil Code, Code of Obligation and Code of Civil Proceeding are applicable.
No bifurcation
Ankara CiviI IPR Courts have exclusive juristiction on decisions of the Turkish Patent Institute.

3. (Article 136, 73, 74 of Decree Law No 551)
Infringing Acts
(Article 136, 73, 74 of Decree Law No 551)
Direct Infringement (art. 136/1-a-b):
Imitating the patented product or using the process
Selling, distributing, commercializing, importing or keeping them in possession for commercial purposes such products, manufactured as a result of an infringement, where the person concerned knows or should know that such products are imitations
Indirect Infringement (art. 74):
The right holder is entitled to prevent third parties, from handing over to persons unauthorized to work the patented invention, elements and means related to an essential part of the invention;
have to know or know essentiality and use
not commonly to be found on the market
Contributory infringement (art. 136/1-e)
Participating in a/m acts or assisting, inducing, facilitating,

4. Requirements for Compensation
Act (tort)
Illegality
prohibited act
no statutory exceptions
Damage
Causal link
Culpability
intent
negligence

5. Intent (Dolus): Compensation:
551 D.Law 138/1: A person who, produces, sells, distributes or puts in commerce, imports or keeps in possession for commercial purposes a product or makes use of a process under patent protection shall be liable to remedy the unlawful situation and to compensate the prejudice/damages he has caused.
Absolute (strict) liability or presumption?
«SCOTCH-BRITE decision- 11. Commercial Chamber 2005/5091, 2006/4635) «857 counterfeit products were found in the defandent’s market. Defendant has acknowledged that products are fake. The defendant should act as a prudent and diligent trader. The defendant shall be deemed to know that the products are fake.»

6. Negligence (Culpa) 556 D. Law art. 136/1-b:
«Selling, distributing, commercializing, importing or keeping them in possession for commercial purposes or using by applying such products, manufactured as a result of an infringement, where the person concerned knows or should know that such products are imitations in whole or, in part;»

7. «Belko case» (11. Com. Cham. 2006/12733, 2007/15245)
«Defendant has given his home phone to a friend named Harun Reşit who used the phone as a call center and in the flyers to sell the fake ‘Belko’ brand coals.»
Defense on innocence is:
contrary to the ordinary course of life
not credible

8. Types of Damage Material damages Actual damages
Loss of profit (Non-realized Income)
Increasing the non-realized Income
Compensation for loss of reputation
Moral damages
The burden of proof is on the plaintiff
Patent owner may request from the infringing party the documents

9. Information: Documents Evidencing Infringement (Art. 139)
Information on:
the amount of patent infringements
profit obtained from production
Commercial records and documents
Distribution
Offers
Advertisement: media, circulation figures, time
Production: time, quantity, types, prices, trade names
Acquisition costs without overheads
Profits

10. Calculation of Lost Profit
On the option of the proprietor of the patent:
a)The lost income of the patent owner
b) The income generated by the infringing party
c) Reasonable royalty (licence analogy)
In calculation of the lost profit:
Economic importance of the invention
Validity period of the patent in time of infringement
Number and nature of the license
If the patent holder has not fulfilled his obligation to use the patent, lost profit shall be calculated according to licence analogy

11. The lost income of the patent owner
Lost sales
Possible sales of the patent holder
Price reductions
Plaintiff's sales data
the infringer's sales data
determining possible net income
the increase in sales of the plaintiff

12. The income generated by the infringer
Net income
Reduction of the costs arising from directly infringing products
«DORUK» Trade mark case-2003
overall profitability ratio X gross sales amount generated from infringing products
«Medrad Tomografi» patent case
gross sales amount-direct costs: Net income

13. Licence Analogy Usual license fee Market value of the patent
Appropriate royalty regarding the infringement in issue
Adaptation to the subject of litigation of patent infringement
If necessary, the plaintiff’s income: «MEF case-2012»
Transit goods: licence anology is applicable, "Galatasaray case-2007"

14. Final Remarks Increasing Lost profit: «Belko cases» = (%10)
Code of Obligation art 50/2: if necessary, the judge determines the compensation in equity (established case law)
Moral compensation: If there is an infringement, there is also non-pecuniary damage : (Bosch case-2007)
No double or triple damages, but the TSE (Turkish Standards Institute) trade marks infringements (controversial or established case law?)

15. Thank you for your attention