Italy: Upcoming rules concerning contributory/indirect infringement and patent infringement exceptions

26 October 2016

Giovanni Galimberti, Massimiliano Mostardini, Fulvio Mellucci, Evelina Marchesoni

On 18 October 2016 the Italian Senate approved bill no. 2524 on ratification of the Unified Patent Court Agreement ("UPCA"), which had previously passed through the Italian Chamber of Deputies on 15 September 2016 (the "Bill").
 
Provided that the President of the Republic does not raise exceptions[1], he will promulgate the Bill within one month from the approval of the Senate. The Bill will then be published in the Official Gazette and come into force the next day. 

In addition to the ratification of the UPCA, the Bill contains important rules which will be inserted in the Italian IP Code ("IPC") concerning contributory/indirect infringement and patent infringement exceptions.
 
These rules appear to replicate the text of Article 26 UPCA related to the "Right to prevent the indirect use of the invention" which provides:

"(1) A patent shall confer on its proprietor the right to prevent any third party not having the proprietor's consent from supplying or offering to supply, within the territory of the Contracting Member States in which that patent has effect, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect. (2) Paragraph 1 shall not apply when the means are staple commercial products, except where the third party induces the person supplied to perform any of the acts prohibited by Article 25. (3) Persons performing the acts referred to in Article 27(a) to (e) shall not be considered to be parties entitled to exploit the invention within the meaning of paragraph 1."

The current rules regarding contributory/indirect infringement
 
Currently in Italy there is no statutory provision relating to contributory/indirect infringement[2].
 
The Italian courts acknowledge contributory/indirect infringement on the basis of:

  • Article 2055 of the Italian Civil Code which provides for joint liability; and
  • Article 124 IPC which provides, in particular, that an IP owner may obtain: (i) an injunction and withdrawal from the market of the infringing products against intermediaries whose services are used to infringe an IP right; and (ii) the assignment of the specific means aimed specifically at manufacturing the infringing products or putting into effect the protected method or process.

The current rules regarding exemptions to patent infringement
 
Article 68.1 IPC, provides some exemptions from patent infringement, namely for:

  • private and non-commercial use;
  • research and experimental use;
  • acts for obtaining the marketing authorization from the relevant Medicines Authorities (the so-called "Bolar exception"); and
  • the extemporaneous preparation of medicines.

The new rules contained in the bill
 
The Bill provides for the addition of the following three paragraphs in Article 66 IPC, related to rights conferred by the patent:
 
"Article 66.2-bis. The patent confers on its owner also the exclusive rights to prohibit third parties, subject to the consent of the owner, from supplying or offering to supply subjects other than those entitled to the use of the patented invention with means, relating to an essential element of that invention and necessary for its implementation in the territory of a Country in which it is protected, if the third party has knowledge of the suitability and intended use of such means to implement the invention or is able to have it with reasonable care."
 
Article 66.2-ter. Paragraph 2-bis does not apply when the means are constituted by products that are currently on the market, unless the third party induces the person to whom they are supplied to perform the acts prohibited under paragraph 2.
 
Article 66.2-quater. For the purposes of paragraph 2-bis the subjects performing the acts referred to in Article 68, paragraph 1 are not considered subject entitled to the use of the patented invention".
 
In other words, provided there are no unlikely last minute interventions, within one month, the IPC will contain a specific statutory provision regarding contributory/indirect infringement.
 
Moreover, it seems that the IPC will will not extend the patent exceptions provided by Article 68.1 IPC to third parties that supply the patent-protected products/means to the exempted subjects.


[1] In fact the President of the Republic rarely raises exceptions. In that case the President of the Republic requests that the Senate and the Chambers of Deputies amend and approve the bill again, following which the President of the Republic is obliged to promulgate the bill.

[2] Italian courts tend to refer the concepts of "indirect" and "contributory" infringement as having the same meaning