Account of Profits

1The basic principle underlying the relief of accounts of profits is to ensure that the patentee gets the profits made by reason of the infringement. An account of profits will be confined to the profits actually made by the defendant as a result of the infringement. Its purpose is not to punish the defendant but to prevent unjust enrichment. (See Dart Industries Inc v Décor Corpn Pty Ltd [1994] FSR 567, p 574.)

2The defendant will have to account for only those processes and products which are the subject matter of the infringement. Thus, if a part of the defendant's process or product does not infringe, it would not be taken into account in determining the profit that results from the infringement. No such apportionment will be necessary if the court is of the opinion that all the profits are attributable to the infringement. (See Peter Pan Manufacturing Corpn v Corsets Silhouette Ltd (1963) RPC 45.) Similarly, if the court is of the opinion that the 'invention was the essential ingredient in the creation of the defendant's whole product or process', it may be appropriate not to apportion. (See Hoechst Celanese International v BP Chemicals (1999) RPC 203, p 222.)

3The basis of apportionment will depend upon the facts of each case, bearing in mind always that the aim of the exercise is to arrive as closely as possible at the true profit. (See Dart Industries Inc v Décor Corpn Pty Ltd [1994] FSR 567, p 577.) If the court is of the opinion that such an apportionment is appropriate, it must do its best to split the profits between infringing and non-infringing parts." (See Potton Ltd v Yorkclose Ltd (1990) FSR 11 (a copyright case).) Thus, it would be appropriate in certain cases, to assess the profit by deducting a proportion of the overheads, including fixed costs.

4In Cipla v F Hoffmann-La Roche (2015) (para 183), taking into account the fact that Roche's patent would expire soon, the Division Bench did not grant the injunction, instead decreed Cipla to render accounts concerning "manufacture and sale of Erlocip". It further directed the Joint Registrar to record evidence pertaining to the profits made by Cipla concerning the product.