The Court of Milan on the urgent protection of patents infringed by products sold under the framework of a public tender

In an urgent proceeding before the Court of Milan, the claimant, licensee of the European patent 1089726B1 (correspondent to the Italian patent IT 99930567.5) relating to a food supplement essentially composed of HMB, arginine and glutamine, requested the court grant an injunction against the alleged infringer.

More specifically, the claimant challenged the defendant’s sale of a food supplement (which the claimant alleged fell within the scope of its patent) to a public administration as a result of a public tender.

The Court of Milan, prima facie, acknowledged the validity of the patent and its infringement by the defendant’s product, and therefore issued the requested injunction and prohibited the defendant from marketing the challenged product.

It is important to highlight that, throughout the proceeding, the defendant argued that an interim injunction could not be issued since it was bound by a public contract, as awarded by a public tender, to supply the challenged product to a public entity. The defendant claimed that, should the injunction be issued, it would be prevented from supplying the product and it would incur fines and penalties as a result.

In this regard, the court specified that the fact that the defendant would be fined by the public administration for not supplying the challenged product could not be regarded as a justification for the infringement and could not exempt the defendant from the injunction. In fact, without the injunction the defendant would be able to continue supplying the challenged product, causing irreparable damage to the claimant.

In striking a balance between the interests involved, that is between the interests of the claimant to protect and enforce its exclusive patent rights, the interests of the defendant to continue supplying the challenged product and to not incur fines and penalties, and the interests of the public administration to receive the supply of the challenged product, the court gave priority to the claimant’s right to enforce its patent and therefore to the protection of the industrial property right.

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