IP Insight: Patent Litigation, Statute of Limitations for Damages

Photo by Nadine Shaabana on Unsplash

By Daniel Eid and Cameron Ward

Disclaimer: This insight should not be construed as legal advice on any specific facts. The contents are intended for general informational purposes only. You are urged to consult your own solicitor on any specific legal questions you may have.

Introduction

Patents are a form of hard IP which grant commercial entities a monopoly over inventions for a set amount of time, during which they can prevent others from making, using or selling their protected invention without permission. There is a high prevalence of patent development in innovation driven sectors. As an IP right they protect significant value and infringement can result in significant financial damage for the patent holder. As patented technology typically has a global reach, it is important to understand any difference in the capability to enforce a patent on a worldwide scale. This piece looks at differences in the statute of limitations as they apply to patent damages in some key countries across Europe and Asia.

United Kingdom

Time limitation on damages claims in United Kingdom: 6 years

The latest time that a patent owner or interested party can sue the other party after discovering that there has been an infringement of its patent rights is, according to the section 9(1) of the Limitation Act 1980:

1. “An action to recover any sum recoverable by virtue of any enactment shall not be brought after the expiration of six years from the date on which the cause of action accrued.” [Source: gov.uk.]

Germany

Time limitation on damages claims in Germany: 3 years

According to both the guides laid out below: “the regular period of the statute of limitations is 3 years from the end of the year in which the patentee became aware of the infringing acts. If the patentee does not become aware of the infringing acts, the statutory limitation period is 10 years starting from the date on which the first patentee first incurred damages due to the infringing act. The absolute limitation period, i.e. without knowledge of the infringement and without damages being incurred, is 30 years starting from the date when the first infringing acts took place”. 

[Source 1: Preu Bohlig, Source 2: ICLG]

France

Time limitation on damages claims in France: 5 years

According to Article 2224 of the French Civil Code: “Personal or movable actions are prescribed by five years from the day on which the holder of a right knew or should have known the facts allowing him to exercise it.”

According to Jones Day: “Actions for patent revocation are now subject to a five-year statute of limitation because Article 2224 of the French Civil Code as amended by the French Act of June 19, 2008, provides that "Personal actions or movable rights of action shall be time-barred after five years from the day the holder of a right knew or should have known the facts enabling him to exercise his right" and because actions for patent revocation are considered to be personal actions within the meaning of this Article.”

[Source 1: Article 2224 of the French Civil Code, Source 2: Jones Day.]

Italy

Time limitation on damages claims in Italy: 5 years

According to the Legal 500: “There are no statutes of limitation for commencing a patent infringement action, although a statute of limitation period does apply in respect of damages and return of profits. The statute of limitation for patent infringement damages is the same as normally applicable to damages connected to tort liability i.e. 5 years. Recent case law has clarified that, unlike the damages that the patentee has suffered due to the infringing conduct, the return of profits remedy does not belong to the tort liability system and is therefore subject to the ‘general’, longer statute of limitation, namely 10 years.”

[Source: The Legal 500]

Spain

Time limitation on damages in Spain: 5 years

As per The Law Reviews: "Civil actions in respect of patent infringement may be brought up to five years from the date on which the action could have first been brought (i.e., the date on which the patent holder discovered the infringement). If the patentee waits longer than this five-year period, it will lose its cause of action against the infringer, who will be entitled to use the invention with impunity.

However, the prevailing view of the Spanish courts is that in the case of continuing acts of infringement (e.g., sales of the product over a continuous period of time), the five-year period must be calculated from the date when the last infringing act took place."

Civil actions for patent infringement can be brought up to 5 years after the discovery of infringement. An exception is for continuing acts of infringement, in which case the 5-year period begins to run from the date of the most recent infringing act. This is in accordance with Bird and Bird’s article below, where they confirm that the statute of limitation for intellectual property infringement claims in Spain is 5 years from the date of the infringing act(s).

[Source 1: The Law Reviews] [Source 2: Bird and Bird]

Russia

Time limitation on damages in Russia: 3 years.

According to American Lawyers Quarterly and ICLG, the statute of limitation in Russia is 3 years calculated from the day the claimant discovered or ought to have discovered patent infringement had occurred

[Source 1: American Lawyers Quarterly] [ Source 2: ICLG]

Table of Summary

Our Insight: Patent Damages Statute of Limitations

The variance in the statute of limitations across the UK, Germany, Italy, Spain and Russia should be considered a microcosm of the larger picture. Simply that the fortunes derived from damages on a patent infringement claim may vary depending on the jurisdiction in which infringement has taken place.

In order to maximize the benefit of patent protection and the restitution should infringement occur; it is vital to ensure that 1) a level of vigilance is in place around the patent, in general, to identify infringement as soon as possible and 2) that key jurisdictions’ local laws are understood as it pertains to the patent – and where possible local legal representatives are instructed.

In essence, the value of a patent past its function as a deterrent is in its enforcement. As such, it being granted is only the beginning of the concerted activity to ensure that its value is optimized.

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