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NON-PRACTICING PATENTEE CAN CLAIM INFRINGEMENT DAMAGES
The issue of whether a patentee that is not prac-ticing its patent can claim damages for in-fringement has been highly controversial in practice. Article 79 of the Patent Act provides that the rights holder of an invention patent should display the patent number on the patented articles or on their packaging, and may require a licensee or compulsory licensee to do the same; if the patent number is not so displayed, no claim for damages may be made. It might be inferred from the wording of Article 79 that if a patent is not practiced, so that there are no patented arti-cles or packaging upon which a patent number can be displayed, there would appear to be no basis for claiming damages.
However, the proviso to Article 79 states that the article's provisions shall not apply if an infringer was aware that the goods concerned were pro-tected by patent, or if facts show that the in-fringer should have been so aware. This appears to provide for exceptional circumstances under which a patentee that is not practicing its patent may nonetheless claim damages.
In a 2007 judgment, the Supreme Court stated that infringement of a patent reduces the profit that the patentee may normally derive from practicing the patent, and that it thus cannot be said that infringement causes no loss to the pat-entee if the patentee is not manufacturing pat-ented articles or offering them for sale, or has not licensed another to manufacture such articles or offer them for sale. Therefore a non-practicing patentee may still claim damages. If the patentee cannot prove the amount of such damages, or would obviously have great difficulty in doing so, the court should set the amount in accordance with Article 222 Paragraph 2 of the Code of Civil Procedure, taking into account all the circum-stances of the case and the persuasiveness of the evidence before it.