News Patents and designs 2000

"Brokerage" patent infringement.

The Court of Appeal of Milan declared an Italian company guilty of patent-counterfeiting due to its activity of brokerage between two companies foreign to Italy and in respect of a product patented in Italy
September 20, 2000

With a sentence of July 16, 1999, beyond recall, the Court of Appeal of Milan declared an Italian company guilty of patent-counterfeiting due to its activity of brokerage between two companies foreign to Italy and in respect of a product patented in Italy..

The product, a pharmaceutical product, is protected in Italy by a European patent in the name of a Swedish company.

The broker acted for two companies both established out of Italy and active in countries where the product is not patented.

The Italian broker has been condemned for infringing sections 1 and 1-bis of Italian patent law, on the basis of the following grounds :

I) section 1 recites that the rights inherent in a patent for an industrial invention consist of the exclusive right to work the invention and to profit therefrom within the territory of Italy, these exclusive rights extending also to trade in the patented product .

II) section 1-bis affirms that in particular, the patent confers to its proprietor the following exclusive rights: if the subject matter of the patent is a product, the right to prohibit third parties, save his consent, to produce, use, market, sell or import to these purposes said product..

III) in its considerations before the Court, the appellant broker affirmed not to infringe the above-mentioned provisions because it did not produce nor sell the product in Italy. It only acted as an intermediary between a first company, which produces the product in a country where it is not patented, and a second company that buys and uses the same product in another country where it is not patented either. .

IV) to the contrary, the patentee affirmed that the Italian broker did profit from the invention in Italy, thus infringing the explicit provision in section 1, and that as a matter of fact brokerage is one of the many possible types of trade, since the latter term has been always interpreted in a broad sense, inclusive of " to offer to sell or to advertise".

V) the Court gave judgement against the broker acknowledging that :

brokerage can be considered as a form of participation in a trade activity,

by "profit" it has to be meant an enrichment achieved by a subject in the place where it is domiciled, resident or headquartered, so

an activity of brokerage of the kind at issue constitutes an infringement under sections. 1 and 1-bis of Italian Patent Law.
Short comments:
there is no doubt that an activity of brokerage may be regarded as a trade action; while less obvious is that - whereas the profit of the broker was not actually proven as yet occurred - the Court decided that the establishment of a stable organisation per se is sufficient to presume the occurrence of an economic income.

 

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