Patent enforcement in Italy
January 2018 | SPECIAL REPORT: INTELLECTUAL PROPERTY
Financier Worldwide Magazine
January 2018 Issue
Under Article 66 of the Italian Intellectual Property (IP) Code, the patent holder is granted the following exclusive rights: where the subject matter of the patent is a product, the right to forbid any third party to manufacture, use, market, sell or import to those aims the product; where the subject matter of the patent is a process, the right to forbid any third party to use the process or use, market, sell or import the product obtained through that process.
As a consequence, third parties doing the above in absence of the patent holder’s authorisation infringe the patent.
In addition, third parties infringe the patent when they supply any person, other than those entitled to use the patented invention, with means relating to an essential element of the invention and necessary for its implementation, if they are aware of the suitability and intended use of such means to implement the invention or could be aware of it using reasonable care (so-called ‘contributory’ or ‘indirect’ infringement).
Patents are enforced before IP Courts, of which there are currently 20 across all Italian regions except Valle d’Aosta. The remedies available vary depending on whether urgent proceedings or ordinary proceedings are commenced.
Urgent remedies include, first of all, search orders. They authorise the patent holder to inspect the premises of a suspected infringer together with a court official, in order to collect evidence of the infringement (for example, pictures of the infringing goods and relevant manufacturing tools, copies of the technical and commercial documents, copies of the accounting records and so on). These are often granted without giving prior notice to the counterparty, which makes this kind of order extremely effective, because the counterparty will not be prepared for the inspection. In many cases, where the execution of the inspection enabled the collection of significant evidence of an infringement and its entity, the infringer will be inclined to try and reach a settlement before merit proceedings are begun.
Other urgent measures available are seizure orders. In these cases, the patent holder is authorised to access the premises of the infringer, together with a court official, but here the aim will be to have the infringing goods seized by the court official. The seizure may be limited to samples or it may cover all infringing products in stock, plus the materials and tools used to manufacture them. Also in these cases, the order can be granted ex parte, particularly if it only concerns samples.
Finally, the most relevant urgent remedies are preliminary injunction orders, by means of which the infringer is enjoined from any further infringement. These orders, which are rarely granted ex parte, can be assisted by penalty provisions in the event of a breach of the injunction or a delay in complying with the same. In addition, the patent holder is entitled to request that the infringer is ordered to publish the injunction in one or more newspapers or magazines. However, this request is rarely granted: most Italian courts tend to grant it only at the end of proceedings on the merits.
These urgent remedies can also be granted in the same proceedings, indeed, all three can be requested within the same motion.
Search orders and seizure orders require the subsequent commencement of proceedings on the merits within the term of 20 working days or 31 calendar days (whichever expires later), otherwise they will expire. Preliminary injunction orders will become final if they are not appealed and overturned, with no need for the patent holder to subsequently commence proceedings on the merits if he or she is not interested in obtaining the further remedies available at the end of merits proceedings. Nevertheless, proceedings on the merits might, in any case, be commenced by the counterparty, including for the overturn of the preliminary decision.
Remedies available at the end of proceedings on the merits are mainly final injunctions, damages, an order to withdraw the infringing goods from the market and an order to destroy the infringing goods and production tools.
Damages are calculated based on Article 125 of the IP Code, which sets three main criteria: (i) the right holder’s lost profit and consequential damages; (ii) the reasonable royalty that the infringer would have paid if it had obtained a regular licence to commercialise the product (which criterion constitutes an alternative way to determine the right holder’s lost profit); and (iii) the infringer’s profit, alternatively to the right holder’s lost profit or insofar as they exceed it.
In order to assess damages, the patent holder can also request the judge to order the alleged infringer to disclose banking, financial and commercial documentation, including accounting records, so as to quantify the amount of sales and revenues related to the goods in suit. In addition, the patent holder can request that the infringer be ordered to disclose information related to the origin and distribution of the goods.
With regard to the detection of patent infringements, an extremely effective tool is the customs’ monitoring programme regulated by Regulation (EU) no. 608/2013, which allows the patent holder to request the (Italian or EU) customs to halt goods suspected of infringing the patent. In addition, a few years ago the Italian fiscal police launched their anti-counterfeiting web portal, whereby companies can exchange information on their IP rights with the fiscal police which might, in turn, halt infringing products detected on the national territory. Applying for these tools is both rather inexpensive and extremely effective. Italian customs and fiscal police have proven to be very efficient in detecting and seizing infringing goods, and when they do so, IP right holders are in a position to decide whether they want to pursue the matter further or leave it to customs or the police, which will generally commence criminal proceedings regardless.
Elena Martini is a partner at Martini Manna Avvocati. She can be contacted on +39 02 4507 4727 or by email: email@example.com.
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