Reasons for Proposal
Reason for proposal
The current Act prescribes that, if the design right or exclusive license right is infringed, the design right owner or exclusive license right owner (hereinafter referred to as design right owner, etc.) may request indemnification for damages caused by the infringement of design right, and that the court may calculate the damages considering the profit of the infringer as the loss of the design right owner.
For the calculation of damage, it is pointed out that the design right owner, etc. shall prove the profit of the infringer; since it is almost impossible for the design right owner, etc. to prove the damage with the acquisition of major information such as business secrets possessed by the infringer and to show it in the trial process, however, the system should be improved so that the burden of proof is adequately distributed.
Meanwhile, the damage calculation system against the infringement of patent right was improved with the amendment of the Patent Act in 2016, i.e., the court’s order of appraisal, liability of the party for explanation, expanded subjects and range for data submission order to the infringer, etc. The current Act handles similar areas but does not follow systematic changes; as a result, practical remedy of the damaged party is more difficult compared with the patent right infringement lawsuit in legal action.
Therefore, rapid and accurate calculation of damage is sought by assigning liability to the infringer to explain about the appraisal for the calculation of damage caused by infringement. Likewise, effective protection of right of the design right owner, etc. is sought by improving the practical effect of data submission order with the expansion of the subjects and range of data submission order of evidence possessed by the infringer and with the application of punishment in case of noncompliance with the court’s evidence submission order.
Main content
A. When the court orders appraisal to calculate the damage caused by the infringement of design right, etc., the party shall explain about the matters needed for the appraiser for the appraisal (Establishment of Article 115-1 of the draft).
B. Proof of infringement is included in the range of order to be issued by the court in the design right or exclusive license right infringement lawsuit, with the subjects of submission expanded from documents to data so that various electronic record media, etc. may be used as evidences.
C. A confidential review procedure system is adopted for preview by judges in order to determine the rationality of reason for noncompliance with the evidence submission order (Establishment of Article 118-2 of the draft).
D. Liability for submission of even business secrets is assigned if necessary for proof of damage or calculation of damage and, in case of noncompliance with the court’s evidence submission order, assertion by the other party is accepted as the truth in order to relieve the burden of proof of the design right owner, etc. (Establishment of Articles 118.3 through 118.5).
