Transcript www.eplaw.org

Indirect infringement –
too much subjectivity?
EPLAW Annual Meeting and Congress
Brussels, 2 December, 2011
Giovanni Galimberti
Legal Basis – European view
● Luxembourg Agreement relating to Community
patents (1989): Article 26
● Proposal for a Council Regulation on the
Community Patent (2000): Article 8
● European Patent Litigation Agreement (2004):
Article 34
Page 2
Legal basis – European view
Article 26 of Luxembourg Agreement relating to Community
patents
1. A Community patent shall also confer on its proprietor the right to
prevent all third parties not having his consent from supplying or
offering to supply within the territories of the Contracting States a
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 it is
obvious in the circumstances, that these 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 when the third party induces the person supplied to
commit acts prohibited by Article 25.
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Legal basis – European view
Article 8 of Proposal for a Council Regulation on the Community
Patent
1. In addition to the right conferred pursuant to Article 7, the Community
patent shall confer on its proprietor the right to prevent all third parties
not having his consent from supplying or offering to supply within the
Community to a person, other than one 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 it is
obvious in the circumstances, that these 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 third party induces the person supplied to commit acts
prohibited by Article 7.
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Legal basis – European view
Article 34 EPLA
1. A European patent shall also confer on its proprietor the right to prevent
any third party not having his consent from supplying or offering to
supply 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
it is obvious in the circumstances, that these 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
commit acts prohibited by Article 33.
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Legal basis – Italian view
● Indirect infringement and contributory
infringement are synonymous in Italy
● There is no specific substantial rule regarding
indirect/contributory infringement
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Legal basis – Italian view
•
Anyway, relevant rules:
Article 124 IP Code (civil sanctions): “… The injunction can
be granted also against any intermediary, who is part of the
proceeding and whose services have been used for the
infringement of an IP right.
A decision ascertaining the infringement of IP right may
order that ownership of the … specific means solely aimed at
manufacturing or at exploiting the protected method or
process shall be transferred to the right holder”
Article 131 IP Code (preliminary injunction): “… The
injunction can be asked also … against any subject whose
services are used for the infringement of an IP right”
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Objective requirements
● Supply of means, which:
-
must occur in Italy and must be intended to put
into effect the invention in Italy (Court of Bologna, 3
March 2006)
-
must relate to an essential element of the
patented invention (Supreme Court no. 22495, 19 October
2006)
-
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may have non-infringing as well as infringing uses
Objective requirements - following
● It is not necessary that direct infringement by any
third party actually takes place (Court of Bologna, 3
March 2006; Court of Turin, 4 February 2005)
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Subjective requirement
● Staple product
supplier knows or its
obvious in the circumstances that the means are
suitable and intended for putting the invention into
effect
● Non staple product
the consciousness of
the infringing destination of the means is presumed
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Subjective requirement - following
● The third party has no consent of the patent
owner or the licensee to practise the invention
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Case law - Leeds&Northrup Italy vs Sidermes
Supreme Court, 12 June 1996, no. 5406
“A company marketing products or means that are suitable
to be used to carry out a patented method by a third party
but that can be used also for uses which objectively do not
interfere with the scope of protection of the patent [staple
products], does not commit contributory infringement if
it is not proved that they were aware of the unlawful use by
the third party”
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Case law - EC&C Technologies vs Siirtec Nigi
Court of Milan, 16 May 2011
“It is not needed that the means are univocally destined to
infringe the patent. Anyway, such a univocity would prove
the consciousness, necessary psychological requirement of
the concurrent infringement”
“It is also evident that, besides the wilfulness to participate
in the illicit behavior – intended as the consciousness to
operate in order to make possible the third party’s
infringement – a negligent behavior could be relevant as
well, where the illicit use is particularly evident considering
the circumstances”
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Case law - HP vs Recler Component + Ink
Court of Turin, 6 May 2004
“The manufacture and commercialization of ink-jects
univocally destinated to be used in a protected printer
constitute [indirect] infringement of the patent claiming
the relevant printer”
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Case law - Basf vs Makhteshim Agan
Court of Milan, 25 June 2010
“The offer on sale of a product not protected by any
patent suggesting, through advertising messages, to
use it in connection with another ingredient constitutes
[indirect] infringement of the combination patent”
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Thank you
Avv. Giovanni Galimberti
Partner
Bird & Bird
Via Borgogna, 8
20122 Milan
Italy
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