Author: Daniele Caneva

Trademark, patent and legal specialists at Bugnion run through the process for taking infringement action in Italy

Published on THE PATENT LAWYER MAGAZINE (November-December 2012)

Large companies are well acquainted with the worth of the exclusive rights guaranteed by a patent. Among the many reasons compelling a business to patent, a key one is to protect the research & development (R&D) investments. This is affirmed by enforcing the owned patents against possible infringers.

Enforcing a patent in Italy
There are many different ways for a company to avail itself of the exclusive rights granted by a patent. For example, it is possible to start a civil action through an infringement litigation in Italy.
The patent protection can be achieved in Italy either through an urgent or ordinary lawsuit or in a penal court. The patent infringement is also a crime according to Art. 473 of the civil code.

Infringement actions
It is possible to start an infringement litigation in Italy on the grounds of a patent application, meaning you don’t need to wait for the grant of the application. This is just a peculiarity of the Italian system. It is possible to start an infringement litigation provided the patent application is either open to the public or previously notified to the opposing party.
Of course, to have the sentence passed it will need to wait until the application is granted by the concerned office. Generally the Italian Patent Office speeds up the
Examination Procedure in the case of patent applications that are being enforced through an infringement litigation. The judge can, moreover, decide to adjourn the suit, taking into consideration the circumstances of the suit.

The timeframe
On average, a first instance infringement litigation lasts about three years. However, the patent is enforced mainly through urgent procedures, which allow businesses to obtain very effective measures in a short timeframe.

Precautionary measures
Either before the action starts, or during the litigation, it is possible to ask for effective precautionary measures. These will require the infringer to immediately cease in its infringing activity.
As with litigation, the precautionary measures can be granted when a patent is still at the application stage.
Provided that the application has been opened either to the public or to the persons to whom the precautionary measures would apply.
For example, it is possible to ask for a restrictive measure forbidding the infringer to continue producing, selling or actively using the product which is the subject of the exclusive right. It is also possible to ask for the destruction of the means used for production and the withdrawal from the market of the products which are asserted to infringe.
It is also possible to ask for a seizure of the products which are the subject matter of the exclusive right, the tools to produce them and, possibly, also of the production facility. Further, you can ask for the seizure of the accounts, the invoices, the disclosing and/or advertising material in order to acquire proofs of the entity responsible for the infringement.
As well as requesting the seizure and/or injunction measures it is possible to ask for a decision publication to be placed in newspapers and concerned magazines.
Both injunction and seizure have the effect to immediately interrupt the activity that is infringing the patent rights.
Requests for precautionary measures are quickly examined. There is also the possibility that the measures will be granted without hearing from the opposing party (inaudita altera parte).
The opposing party would have the right to appeal against the decision. In patent cases, the judge generally requests Technical Advice to evaluate, at least in brief, the validity of the right, and above all, the infringement.
Where Technical Advice is required it will take longer to grant precautionary measures.
The grant of precautionary measures by the judge is subjected to the checking of two basic requirements. The first requirement is the so called “periculum in mora”, in other words, the danger from the delay.
Such a requirement is met if to delay would produce an irreparable damage to the patent owner. In particular, it happens when the infringing activity is ongoing, even if many judges still believe that the patent owner has to react quickly against the infringement.
The second requirement is the so called “fumus boni iuris” (presumption of a good right). This is met if it is reasonable that the involved patent is valid and actually infringed.
Is the precautionary protection usable also in case of an exhibition in a fair in the Italian territory?
According to the Italian Law, goods which are being exhibited at a fair in the county cannot be seized, but can be used for descriptions (see later section). The exception is if criminal law applies.

Proof of the infringement
The burden of proving the infringement belongs to the owner of the patent to be enforced. In some cases, it can be difficult to gather all the necessary proofs to concretely prove the interference with the subject matter of the patent.
If the infringing product is easily available on the market then it is a simple matter to the purchase one. The litigant will then need to prove that the purchased product has all the features listed in the claims of the involved patent. They may need to resort to technical and/or laboratory tests in order to prove this.
It is more difficult in the case of machines, devices or industrial processes that are used in facilities or private areas.
In the case of process patents, Italian Patent Law provides a kind of infringement presumption when the identical product obtained through the process is new, or if there is a substantial probability that the identical product has been manufactured through the patented process. In these cases it is possible to invert the burden of proof.
Moreover, by collecting as much proof as you can on the reasonableness of the infringement, it is possible to ask for a so called description. This is a further precautionary measure which, if granted,
is carried out by a clerk of the court, who is usually supported by a technical expert designated by the judge (often an engineer), to enter the production facilities, stores or production areas of the opponent party and produce a description.
As part of the process the clerk of the court and the technical expert look at and describe in a record the products, the production plants, the producing process, the books or possible other instruments suited to prove the infringement both in qualitative and in quantitative terms.
They can use tools such as cameras to aid their work.
The party asking for the description can generally take part in the inspection. Owing to its nature, the description is granted without hearing from the opponent party. Therefore, it is a very delicate measure because the rights of the asserted infringer, including its knowhow and company secrets, must also be protected.

Obtaining further information
With the reforms provided by the Industrial Property Code in 2010, the judge can either order the exhibition of the documents or ask for information from the opposing party in order to identify other organizations involved in the production and distribution of the products or services which infringe the patent.

How is the infringement evaluated?
With the reform provided to the Industrial Property Code, the infringement evaluation principles already previously followed by the Italian jurisprudence have been clearly defined. In particular, the central role carried out by the claims representing the subject matter of the patent has been asserted. The coverage limitations are therefore defined by the claims, while the specification and the possible drawings
maintain an interpretative role of the claims. To determine the scope of the protection offered by the patent it needs take into account every element equivalent to an element indicated in the claims.
The infringement judgment must assure an equitable protection to the owner, while providing reasonable legal safety to third parties.
If the judgment has a strong technical component, the evaluation of the infringement is generally transferred to the Technical Advice, requested by the judge in progress of the substantive case or to decide a request of precautionary measures. The reforms provided to the Industrial Property Code on these last years have introduced also the possibility to ask for a Preventive Technical Advice. This can be useful
when the check of the infringement shows a margin of doubt.

Validity of the patent
It needs remembering that, when granted, a patent is attackable and prone to objection. In fact, organizations facing an infringement action will generally raise the matter patent validity. The decision on the merits of the validity and infringement claims is generally taken in progress with the debate and, in particular, the progress of the Technical Advice.
The Technical Consultant appointed by the judge can receive documents regarding the judge’s questions about validity even if that issue has not been raised by the opposing party in the case. During the Technical Consultancy every party appoints its own Consultant.

Damages
The judge decides the compensation of the damages coming from the infringement of a patent. They will take into account all the pertaining aspects, such as the negative economic consequences, comprising the lack of gain of the owner of the patent, and the benefits obtained by the infringer. One way to define the amount of damages is to evaluate the license fees the infringer should have paid. The owner of the patent
can further ask for the return of the profits gained by the infringer.

Main measures in infringement cases
A successful infringement action will usually see a granting of a final inhibition of manufacture, trade and use of the goods infringing the right. In addition, it is possible to obtain the order of withdrawal from trade of the infringing goods. The court can also order the publication, either in whole, in abstract, or just in the provision part, of the decision assessing the infringement.


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