The Court of Milan provides guidance on the requirement of the risk of irreparable damage for the purpose of granting an interlocutory description order
The description order, a remedy available pursuant to Articles 129 and 130 of the Italian Industrial Property Code, is a sui generis preliminary investigation measure. To be granted, the applicant must satisfy the requirement of demonstrating a “risk of irreparable damage”, which refers to the existence of a risk of manipulation, deletion or modification of relevant evidence pending interlocutory proceedings or a trial on the merits.
This requirement was clarified by a recent decision of the Corporate Division of the Court of Milan (decision of 9 July 2021, docket n. 25111/2021) which analyzed the legal nature of the description remedy, and designated some fundamental principles in terms of the elements that are necessary for such an application to be granted.
In the case at issue, the claimant brought an action on the merits enforcing its patent covering a printing device that has certain characteristics, claiming that the marketing, by the respondent, of various models of industrial printers constituted a patent infringement. The applicant also filed an ex parte request that the Court grant description measures, in order to acquire evidence of the alleged infringement that was not otherwise available.
The Court of Milan initially rejected the request to grant the ex parte, and allowed the respondent to make submissions. In turn, the respondent argued that, among other things, the allegedly infringing products had already been available on the market for some time, and that therefore there was no risk of dispersion of the evidence.
Subsequently, following the discussion between the parties, the presiding Judge recognized the lack of danger of theft, dispersal or alteration of the evidence (again, the risk of irreparable damage), thus denying the request for description measures tout court.
In providing grounds for the rejection of the claimant’s request, the Judge preliminarily noted that the specific purpose of the description order is to acquire evidence for the purposes of urgency proceedings or proceedings on the merits where there is a risk of dispersion of relevant evidence. In other words, the prevailing purpose is to protect the claimant’s procedural right to obtain evidence and not, as occurs in other types of precautionary proceedings, a determination on the substantive right at issue.
Specifically, the extent of the description presupposes that there is a concrete and tangible risk of an irreversible change of the factual situation that is the subject of the investigation, such as to make it impossible or extremely difficult to obtain evidence.
The Court also considered that Article 6 of the Enforcement Directive no. 2004/48/EC makes an application to a judicial authority to order the production of evidence by the opposing party subject to the fact that the party that submitted the request to the authority in question has “specified evidence which lies in the control of the opposing party”.
Having said that, the Judge found that, in the present case, the concrete risk of theft, dispersal or alteration of the evidential must be excluded, given that, among other things, (i) the products that the applicant assumed to be infringing had already been placed on the market for some time and, therefore, they were easily available; and (ii) as a result, as the products were already definitively outside from the sphere of control of the alleged infringer, there could be no contamination of the evidence.
Furthermore, the Judge took into consideration the fact that the cost of the goods subject to the alleged infringement – which, in any case, does not concern the problem of the dispersion or alteration of the evidence -, in the case at hand, did not rise to the level of making a purchase by the appellant prohibitive; as such, the refusal of the requested measure did not appear in any way to violate the applicant’s fundamental right to defense pursuant to Article 24 of the Constitutional Charter, even more so in view of the fact that such a purchase by the applicant would have represented an investment in the protection of the patent, possibly recoverable at the trial stage.
The Milanese Judge also held that the absence of the risk of irreparable damage was supported by the fact that the applicant had come into possession of the manual and some technical data sheets of the printers subject to the proceedings, and that it had had the opportunity to examine, albeit generically, one of the contested printers, thus obtaining sufficient information to draw up a technical opinion on the alleged interference of some of these printers with the claims of the patent.
Finally, to further motivate his decision, the Judge considered the element of balancing of the parties’ interests and, therefore, of the proportionality and fairness of the requested measures, which, in his opinion, in this case would not be fair, equitable and proportionate, as provided by Article 3 of the Enforcement Directive no. 2004/48/EC.
Recently, an appeal has been filed against this decision, and therefore it is necessary to wait to know the definitive outcome of the matter. That said, the principles expressed by the Court of Milan clarify that, for the purpose of granting the description measures, the requirement of a risk of irreparable harm must be robust, such as to highlight the need for a probative acquisition of evidence in the interlocutory stages, and, a fortiori, when the products at issue are already outside the sphere of control of the alleged infringer.
Overall, this decision is important because it recognizes the intrusive (and sometimes even harmful) nature of the description order, clearly defining conditions and limits for its application, in order to avoid exploitation aimed at circumventing the burden of proof and acquiring evidence that the applicant could obtain, even at a later stage in the proceedings.
Summary: Claudia Scapicchio, Laura di Tecco, Valentina Galli, Studio Legale Jacobacci & Associati
