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If a new product is placed on the market or, however, is better than the previous and the same has success, it is probable that sooner or later competitors will try to manufacture products with similar or equal features to those of the original product. In some cases competitors can benefit from economies of scale, quicker access to market or more economical raw materials and, therefore, they can manufacture an identical or similar product at a lower price. This may negatively influence its business, especially in the case significant investment in R&D was made to create a new or improved product.
The exclusivity rights granted by a patent, attributing to the rightful owner the right to prevent competitors from creating products or use processes that violate its patent rights, also confer the option of requesting compensation for any damages incurred by the third party violation. To prove that such a violation has occurred, it is necessary to show that each individual part of a given claim or its equivalent, is contained in the product or in the process violating its own. Enforcing one's rights when it is believed that one's own patented invention has been copied may be decisive in maintaining competitiveness, market position and profits.
The owner of the patent is the one who is attributed with the responsibility of identifying violations of its patent and, therefore, of implementing actions against the counterfeiter. Independent inventors and SMEs can decide to transfer such responsibility (or part of it) to an exclusive licensee.
If assuming someone is violating a patent, meaning using it without authorisation, firstly identify the subjects engaged in the violation and the product (or process) in question. Collect all the available information to identify the most appropriate action to undertake, from the letter of formal notice to the legal proceeding.


The letter of formal notice - In some cases, when a violation is detected, companies decide to send a notice (commonly called a " formal notice letter"), with which the person alleged to have violated the patent is informed of the possibility of a conflict between the owner’s rights and the commercial activity of the other company. This procedure is often effective in the case of a non-intentional violation: it is probable that the party responsible, in many cases, will interrupt such illegal activity or will agree to negotiate a licence agreement.


The precautionary measure - Sometimes, however, timing is the best strategy to avoid giving the party violating the patent the time to hide or destroy proof of the violation. In such cases, it may be appropriate to initiate a judgement without notice, asking for a "precautionary measure", in order to surprise the party who allegedly violated the patent with a raid, often with the help of the relevant police force, at the premises of the counterfeiter's company. The court may order the party guilty of the alleged violation:

  • to produce the description of the patent or counterfeited mechanism
  • to prevent the illegal action, or to cease any illegal activity such as, for example, the manufacture or sale of products made using the patent in question
  • to publish an ordinance.


The legal proceeding - However, the question of whether a patent has been violated or not can be very complex, with the consequence that any final decision can only be taken after the procedural phase, during which the judge summons witnesses, questions the parties, provides technical consultancy and acquires all documentation useful to the decision.
If, at the end of the procedure, the judge certifies the violation, the owner of the patent can obtain a verdict of prohibition to manufacture or market the result of the violation of the right; or that the objects produced or the means of production used have been assigned as property; or again, that a reasonable compensation for the incurred damages (loss of earnings, moral damages, etc.) have been assured.


Arbitration and mediation - As an alternative to legal proceedings, it is possible to make use of a system of alternative dispute resolution, such as arbitration and mediation, which avoids lengthy and costly trials. Arbitration and mediation clauses are often included in contracts between companies, like those foreseeing a concession agreement, specifically in order to settle disputes quickly.
Generally, arbitration has the advantage of being a less formal procedure and shorter than ordinary procedures before the courts, and an arbitration ruling can be enforced more easily on an international level. However, an advantage of mediation is that the parties maintain a control of the mediation procedure. Such a characteristic can be used to maintain good business relations with the other company, with which it can perhaps be useful to collaborate in the future.


Control procedure - Protection at customs - Another form of protection that can be implemented consists of the control procedure, at customs, of goods protected by patent (valid for one year and renewable for successive one year periods), for which it is necessary to file an application at the Customs Office in Rome, via Carucci 71, indicating which patents the owner wants to supervise - sending a simple copy of the relative certificates of registration - also completing a so-called "Declaration of Responsibility" and providing as much useful information to customs officials as possible to recognise a genuine product from counterfeit one.
All necessary information, as well as the application forms for suspension to customs, is available at www.agenziadogane.it. If a customs authority deems the goods to be counterfeit, it will contact the owner of the monitored patent and the latter will have 10 working days to inform the Customs Office whether the blocked goods are original or counterfeit. Should the goods be counterfeit, the Customs Office will seize the goods and criminal proceedings will be automatically initiated. The patent owner has the right to be informed on the origin and destination of the counterfeit goods, in order to be able to act accordingly, even by initiating a civil action, for example, towards the final recipient.

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