1. Indirect infringement – too much subjectivity? EPLAW Annual Meeting and Congress Brussels, 2 December, 2011 Giovanni Galimberti

2. Page 2 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

3. Page 3 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.

4. Page 4 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.

5. Page 5 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.

6. Page 6 Legal basis – Italian view ●Indirect infringement and contributory infringement are synonymous in Italy ●There is no specific substantial rule regarding indirect/contributory infringement

7. Page 7 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”

8. Page 8 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) - may have non-infringing as well as infringing uses

9. Page 9 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)

10. Page 10 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

11. Page 11 Subjective requirement - following ●The third party has no consent of the patent owner or the licensee to practise the invention

12. Page 12 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”

13. Page 13 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”

14. Page 14 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”

15. Page 15 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”

16. Thank you Avv. Giovanni Galimberti Partner Bird & Bird Via Borgogna, 8 20122 Milan Italy Bird & Bird is an international legal practice comprising Bird & Bird LLP and its affiliated businesses. www.twobirds.com