Statutory Damages Research

Background

In our IP Enforcement 2020 Strategy, we committed to reviewing existing methods of legal recourse for IP infringement to ensure they are effective, consistent, and proportionate. In 2019 the IPO brought together a group of IP professionals and formed the Enforcement Framework Working Group to undertake the review and to help us target the right areas for further research.

Specification Outline - Statutory Damages

At present, a rights holder who has had its rights infringed and who seeks financial redress may, once liability is established, elect between two alternative financial remedies - an inquiry as to damages or an account of profits. The rights holder is not entitled to both. This election may sometimes involve a difficult choice and, once made, the rights holder must then either prove the level of damage suffered or otherwise establish the extent to which the defendant profited from the infringement.

The working group suggested the introduction of an additional (and non-mandatory) option in the UK for calculating financial remedies, in the form of a statutory damages regime. The working group believed that this could provide greater flexibility, potentially lead to time and cost savings for the rights holder (and also for the court system), and may promote improved access to justice overall. It was noted that other jurisdictions (ranging from those in the EU - Bulgaria and Lithuania - as well as the USA, Canada, China, Singapore, Israel and Russia) have a statutory damages regime. The potential introduction of a statutory damages regime was therefore explored in the call for evidence and a recommendation was made in the Government's response to the call for evidence.

In the call for evidence, the majority of responses on this section came from legal professionals and representative groups. The majority of responses from legal professionals and representative groups felt it would be beneficial to have further research and a separate review should be conducted. Of the individual rights holders that responded the majority felt that statutory damages were a good idea. They felt the positives of statutory damages would far outweigh any negative effects of their introduction.

The consensus was that the provision of statutory damages should be explored in more detail.

How to Apply

Organisations interested in delivering the above services, should register on the IPO e-procurement portal (https://ipo.force.com/s/Welcome) by clicking through the 'View Published Opportunities' and clicking the 'Register Interest' button. Registration on the system may be required if you are a new supplier to the IPO e-portal system.

Associated Invitation to Tender (ITT) documentation is now available for bidding organisations to access. Completed ITT submissions must be returned via the IPO e-portal no later than noon (12:00), Thursday 23 December 2021.