In Italy, very effective precautionary procedures and remedies are at the disposal of IP owners to ensure a rapid protection of their rights. The remedies include the ability to obtain an interlocutory injunction to stop the alleged infringement and obtain the seizure of products suspected of infringing the rights.
The interlocutory injunction is a very effective remedy because it can be obtained without initiating the main proceeding. It can also include the definitive removal of the suspected infringing products from the channels of commerce.
According to article 132, Italian Industrial Property Code (IPC), the interlocutory injunction will remain in place if the main proceeding is not initiated by the rights owner, because the injunction anticipates a possible ruling from the main proceeding.
However, the interlocutory injunction may be obtained only if the owner demonstrates with a reasonable degree of certainty that the IP right is being infringed and that the right is valid.
To this end, article 129, IPC requires the IP owner to describe the products suspected of being infringed.
Before the main proceeding, a preliminary opinion on the activity of the suspected infringer with respect to the same right may be obtained by the rights owner. This opinion can be used as evidence for the main proceeding, but also in order to obtain the same precautionary injunction remedy.
The preliminary opinion can be obtained through the so-called preventive counselling procedure under article 128, IPC, which is a preventive procedure in which the suspected infringer can participate.
Italian Procedural Civil Code
Article 128 makes reference to article 696bis, Italian Procedural Civil Code (IPCC), which gives the ability to request a preventive counselling proceeding in order to obtain an evaluation of credit rights arising from a contractual obligation or illegal act.
For example, in the case of patent rights, the credit rights can be considered when requesting compensation for patent infringement activities. Therefore, above all,"the preventive counselling procedure can be used for evaluating the possible amount of compensation deriving from the infringing activities."
The wording of article 696bis, IPCC leaves open the possibility that the preventive counselling procedure under article 128, IPC concerns the validity of a patent right, because the existence of credit rights depends strictly on the validity of the patent.
In particular, in a case where a suspected infringer participates in the preventive counselling procedure, it will probably challenge the validity of the IP right, so the preliminary opinion will also concern the validity of same right.
For the grant of an interlocutory injunction with respect to a patent, the patent owner has to demonstrate before the judge, who is called upon to decide on the possible grant of the injunction, that the patent is valid with a high degree of certainty.
Therefore, in the case of a patent rights, a preliminary opinion obtained by the preventive counselling procedure, according to article 128, IPC, can be very useful to provide the necessary evidence with regard to the validity of the patent.
If it is clear from the preliminary opinion that the infringement will probably also be established in the sentence of any main proceeding that is initiated between the patent owner and the suspected infringer, the preventive counselling procedure can be very useful for the aim of finding a solution between these parties.
Finally, due to the wording of article 696bis, IPCC, the preventive counselling procedure can also be requested by someone who can claim (for any reason) compensation from the right owner, or by a licensee, and/or in order to solve other types of disputes regarding the patent, such as a possible dispute between an employee and employer concerning the right to the patent.
Davide Aldo Falzoni is a European patent attorney at Bugnion. He can be contacted at: firstname.lastname@example.org
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