[Ip-health] JIPLP on Compulsory licencing of Merck Patents in Italy

[James Love]

*  "A recent Italian Competition Authority decision, ordering Merck
to licence a patented drug, has attracted attention for two reasons:
first, it is based on an order of interim relief on European law
alone, there being no express provision under Italian law enabling it
to do so, and secondly, it appeared to go beyond European legal norms
for determining when a compulsory licence should be ordered."

http://jiplp.oxfordjournals.org/cgi/content/short/2/7/452?rss=3D1

Journal of Intellectual Property Law & Practice Advance Access
originally published online on June 12, 2007
Journal of Intellectual Property Law & Practice 2007 2(7):452-462;
doi:10.1093/jiplp/jpm074

Compulsory licencing and interim measures in Merck: a case for Italy
or for antitrust law?
Rita Coco and Paolisa Nebbia*

Legal context: This paper examines an important decision of the
Italian Competition Authority in a case concerning the compulsory
licence of IP rights. The oddity of the case lies in the fact that
the dominant position of the defendant seemed to be due, rather than
to the fact that the latter held certain IP rights, to a peculiar de
facto situation.

Key points: As a result, the competition authority did not apply the
test that is traditionally used in cases of abuses involving IP
rights, but the plain =91essential facilities=92 doctrine.

Practical significance: The case shows that the borderline between
these two types of abuses is a difficult one to draw, and more
generally that the complex relationship between competition law and
IP is in need of clarification. The paper also deals with the issue,
raised by the same case, of whether, in the absence of national
provision to this effect, national competition authorities have any
power to issue interim measures.

Key Words: The right to refuse to licence an IP right lies within the
prerogative of every right-owner, yet the exercise of that right of
refusal may result in an immediate conflict with competition law
principles of abuse of dominant position and, in particular,
essential facilities doctrine. =95 A recent Italian Competition
Authority decision, ordering Merck to licence a patented drug, has
attracted attention for two reasons: first, it is based on an order
of interim relief on European law alone, there being no express
provision under Italian law enabling it to do so, and secondly, it
appeared to go beyond European legal norms for determining when a
compulsory licence should be ordered. =95 This article outlines the
background of the case, investigates its application of the law,
contrasts its approach with that taken by the European authorities,
and draws conclusions as to whether it represents a significant
development in delineating the interface between IP and competition
law in Europe.

Correspondence: * Rita Coco, Italian Competition Authority (Autorit=E0
Garante della Concorrenza e del Mercato), Rome; Paolisa Nebbia, St
Hilda's College, Oxford. Coco was not involved in the Merck and Glaxo
cases; the views here expressed are personal and do not reflect those
of the ICA. Coco has written the second and third parts (the analysis
of the refusal to licence and the Community case-law); Nebbia has
written the first and fourth parts (the legal and factual background
and the interim measure); they have written together the introduction
and the conclusion. Email: rita.coco@agcm.it

----------------------------------------------
James Packard Love
Knowledge Ecology International
mailto:james.love@keionline.org
tel. +1.202.332.2670 / U.S. mobile+1.202.361.3040, Geneva mobile
+41.76.413.6584

"If everyone thinks the same: No one thinks." Bill Walton"