ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
mitments, which oblige them to license the pat- ent on FRAND terms. Failure to abide by these commitments may raise antitrust concerns. 3. Infringement 3.1 Necessary Parties to an Action for Infringement The necessary parties to an action for patent infringement are the IP owner(s) and the alleged infringer(s). The licensee(s) may also start an infringement proceeding but only if there is express authorisa- tion in writing by the patentee. In any case, the licensee(s) may intervene in the litigation in order to claim their own loss of profits due to the infringement actions affecting their own markets. 3.2 Direct and Indirect Infringement As a general rule, direct infringement usually requires that the patent has been violated in its entirety and according to all the claims by the alleged infringer/defendant. Violations involve manufacturing, using, selling, marketing and importing/exporting activities intended to illicitly exploit the patented product. Indirect infringement (also referred to as “con- tributory infringement”) requires the involvement of – at least – two subjects that only partially implement the claims in their products/pro- ceedings – therefore, taken alone, their conduct appears formally licit. Nonetheless, the joint con- duct of the subjects involved make it possible to obtain the patented product/process in its entirety. This hypothesis requires that:
• the conduct of the subjects involved is all necessary for the infringement (eg, one sub- ject manufactures and provides a tool/part/ device to the other subject that is necessarily assembled with the final – infringing – prod- uct); and that • the parties involved have an infringing intent (ie, they know or cannot ignore that the joint conduct generates a patent infringement). In both cases of infringement (direct/indirect), the patent owner has the same remedies for protecting their rights, which usually consist of urgent proceedings/proceedings on the merits aimed at obtaining search requests, seizures, injunctions, damages, etc. 3.3 Process Patents Regarding process patent infringements, there is a special rule related to the presumption of the infringement if the final product obtained is identical to the one of the patentee. Therefore, this situation provides scope for acquiring ex parte injunctions. In terms of jurisdictions, if the infringement is generated by the co-operation of multiple players (suppliers and resellers) as iden- tified by an ex parte order, then the other players may also be involved in the same litigation with potential cross-border effects (providing there are parallel patents). 3.4 Scope of Protection for an Intellectual Property Right As a general rule, the scope of protection for an IP right is strictly connected to its registra- tion. In particular, for patents, the claims (and to a certain – interpretative – extent, also the description and the drawings) are the main ele- ments to be taken into account in the compari- son and evaluation of an alleged infringement. Patent infringement could be literal, complete or partial as well as made “by equivalent”. There
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