ABUSO DEL DIRITTO AL BREVETTO E ABUSO DI POSIZIONE DOMINANTE: IL CASO PFIZER

Even the acquisition – not just the exercise – of a patent (as any other IPR) may amount to a misuse if the achievement thereof runs in contrast with the rules governing its entitlement. And if the patent owner enjoys a dominant position, the patent misuse may translate into an abuse of such position under art. 102 TFEU. This appears to be the core of the decision of Council of State as of February 12, 2014, n.693, which settled the Pfizer Italian case, overturning the opposite ruling of Tar Lazio, and thus upholding the previous ICA’ finding of such an abuse. In particular, the circumstances of the case showed that Pfizer’s request and obtainment a European divisional patent – in truth, a divisional patent of another divisional patent – with effects for Italy and Spain (countries where such request had not been filed), was not intended at legitimately acquiring an exclusive right on a self-standing portion of the parental patent, in compliance with the rule of patent ‘unity’, but was actually aimed at achieving, thirteen years after the filing of the parental patent and in contrast with the said rule, a Complementary Protection Certificate (CPC) in Italy and Spain, in order to prolong exclusive rights on an active principle which had emerged as de facto standard (hence, the assessment of a dominant position), and which prospective competitors in the Italian market had legitimately come to consider “off patent” from 2009, consequently preparing to enter the market with their “generic” substitutes. The article supports the position of Council of State and the Italian Authority, particularly replying to the critiques expressed by an authoritative scholar, also a lawyer of Pfizer in the captioned case. The Authors, finally, hint to the enforceability, even in absence of a dominant position in strict sense, of patent misuses in the legal perspective of both “relative dominance” and unfair competition