Cesare Galli May 28 2018 IP protection for lighting management systems IP Law Galli | Intellectual Property - Italy Cesare Galli Intellectual Property IntroductionGeneral rules versus peculiarity of fieldDependent inventions and compulsory licencesHow is software considered?CommentIntroductionThe high level of quality achieved by the Italian lighting industry has resulted in increased debate about the legal protections available in this sector. Recent discussion has focused on the use of automated systems for the management of lighting (ie, systems which adapt the level of lighting depending on the amount of natural light and the concrete needs of users), which is an important variable for ensuring quality and comfort and achieving sustainability objectives regarding energy consumption in private and public environments. The management of lighting targets can be achieved through the use of electronic components, sensors and control software, for which the use of innovative technologies poses a problem for companies and designers when assessing how best to protect their IP rights from competitors.General rules versus peculiarity of fieldAs regards IP law, the introduction of new technologies is covered by rules that, with a few exceptions, apply to all areas of technology under Article 27 of Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), which was incorporated into Italian law in 2010 through Article 45 of the Industrial Property Code. New technologies in the lighting sector can be the subject of patent applications in and of themselves as well as for specific developments which represent alternative ways of producing existing products, such as using them in a new way or as components of a more complex system. In such cases, if the products are protected by exclusive rights (in particular, patents), they cannot be industrially manufactured and marketed even through the use of new techniques that are subsequently made available without infringing these exclusive rights.The protection offered by a patent under Article 67(2) of the Industrial Property Code (which has been fully harmonised with the main international conventions in such matters, including TRIPs and the European Patent Convention) allows rights holders "to prohibit third parties, without the consent of the holder, from producing, using, putting on the market, selling or importing the product at issue for such purposes".More generally, under Italian law (which is peculiar in this respect), the owner of a patent is entitled to an exclusive right over not only all uses of the technical teaching that is the patent's subject matter, but also – through a more comprehensive rule – over all acts that take advantage of the patent in Italy. According to Italian case law on patent matters, rights holders can prohibit foreign-to-foreign trading carried out in Italy (ie, the trading of products that would constitute counterfeit goods in Italy, but which did not originate in or transit through Italy and are not destined for the Italian market) regardless of whether these products are considered illegal in the European Union.(1) This is a borderline instance that probably exceeds the rights holder's real need for protection; however, it is noteworthy precisely because it originates from an interpretation of Italian law regarding exclusive patents that also reserves an owner's right to take advantage of an invention patented in Italy.Dependent inventions and compulsory licencesThe improved quality of products or systems does not exclude the possibility of patent infringement. There are no exceptions to the above rules when the technical teaching covered by a patent is used, even where a product manufactured by a third party without a rights holder's consent resolves problems with or is of a higher quality than the original product. Italian scholars and case law agree that the introduction of additional features that provide superior or inferior results and a fortiori the obvious substitution of claimed features that result in a so-called 'infringement by equivalent' (the obviousness of substitution is the standard assessment criterion in Italy) do not exclude the possibility of patent infringement. This type of infringement is generally acknowledged, as it involves a patent's implementation and therefore reproduces, directly or by equivalent means, the features claimed as the solution of the technical problem that is the subject of the patent.However, if an improvement or new solution to a technical problem is inventive, it can be independently patented without prejudice to the above rule regarding the possible dependence of an innovation created using pre-existing patents. In such a case, the possibility of obtaining a mandatory licence from a rights holder under Article 71 of the Industrial Property Code is possible when the subsequent innovation represents "an important technical progress of considerable economic importance". However, the relative procedure is cumbersome and largely discretionary in Italy. As a result, obtaining a licence (or the purchase of patented original components from the relevant rights holder) is normally preferable.How is software considered?Software is not patentable in and of itself, as under Article 45 of the Industrial Property Code (and the corresponding Article 52 of the European Patent Convention) it belongs to a group of innovations that "are not considered as inventions". As a result, a piece of software's source code and its external appearance on a computer screen, rather than the ideas behind them, can be protected by copyright. However, Article 45 of the Industrial Property Code specifies that this scenario applies only if the software is "considered as such". If the software is used in a new and inventive way to solve a technical problem that goes beyond the mere operation of the computer on which it is installed or in particular, is used to operate a machine or a system external to the computer (eg, a lighting system), it becomes patentable.Further, when an invention consists of a concrete (and not purely abstract) scheme of links that allows a computer system to operate, this scheme becomes patentable. The European Patent Office guidelines state that:"if the claim specifies computers, computer networks or other conventional programmable apparatus, a program therefor, or a storage medium carrying the program, for executing at least some steps of a scheme, it may comprise a mix of technical and non-technical features, with the technical features directed to a computer or a comparable programmed device. In these cases, the claim is to be examined as a 'computer-implemented invention."Such a scheme is patentable under the usual conditions for all inventions – namely, where it is new, inventive, lawful, susceptible to industrial application and described in a way that allows an expert in the field to implement it. Italian case law has long recognised the validity of computer-implemented inventions. The landmark case in this regard is a 2004 decision regarding an online system for the rental of holiday homes by means of special software.(2)CommentLighting management systems represent both technical and legal challenges. Before disclosing a new creation – as this would lead to a loss of novelty and the impossibility to validly patent an invention – the relevant parties must assess the IP protection available and act accordingly. Companies that produce patentable inventions are advised to consult experts who can evaluate the best strategies to ensure that their innovation exploits its competitive advantage without being open to immediate and legitimate imitation by competitors.For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email ([email protected]). The IP Law Galli website can be accessed at www.iplawgalli.it.Endnotes(1) See Milan Court of Appeal, July 16 1999, later upheld by Supreme Court of Cassation April 3 2003, 5112; and Galli, Cazzaniga, Sarzi-Sartori, Garis, Fodale, Maggi, Zampetti, Castagno, Bonomo, Vatti, Bigonzi and Cerra, "Infringement of trademarks by goods in transit", Report of the Italian Group of the International Association for the Protection of Intellectual Property on Question 230.(2) See arbitration award of December 6 2004. See also Bosotti, Le invenzioni che "non possono costituire oggetto di brevetto" (Art 45 cpi), in Galli, Codice della proprietà industriale: la riforma 2010, Milan, 2010, p 79.