Remedies for violations of competition law involving IP

What sanctions or remedies can the competition authorities or courts impose for violations of competition law involving IP?

Under article 15 of Law No. 287/90, if the Authority finds that an infringement of competition law has occurred, it sets a deadline for the companies involved to cease and desist from the alleged infringements, and can impose fines of up to 10 per cent of the company’s worldwide turnover in the preceding business year, depending on the seriousness and duration of the alleged infringement.

In the case of failure to comply with the above-mentioned cease-and-desist order, the Authority may fine the company concerned at least twice the amount of the fine referred to above and up to 10 per cent of the company’s worldwide turnover in the preceding business year. In the event of repeated failure to comply, the Authority may suspend the company’s business for up to 30 days.

Under article 14-bis of Law No. 287/90, the Authority may adopt ex officio interim measures, prior to the finding of an infringement, when a serious and irreparable harm to competition is likely to occur. A decision providing for interim measures cannot be renewed or extended. The Authority may fine companies up to 3 per cent of their worldwide turnover if they do not comply with the decision setting out the interim measures.

Furthermore, under article 14-ter of Law No. 287/90 (introduced by Law-Decree No. 223 of 4 July 2006), the Authority can accept and make the commitments offered by the parties binding to avoid the negative effects of potentially infringing conduct under investigation, and close the proceedings without ascertaining the alleged breach of articles 2 or 3 of Law No. 287/90 (or articles 101 or 102 TFEU).

Finally, as indicated in question 13, under article 33 of Law No. 287/90, private parties can bring actions in court for the annulment of alleged anticompetitive agreements, as well as request for interim measures and actions for damages before the civil courts (special business courts), including damages caused by the exercise, licensing or transfer of IP rights, in breach of competition rules.

Competition law remedies specific to IP

Do special remedies exist under your competition laws that are specific to IP matters?

There are no special competition law remedies that are specific to IP matters.

Scrutiny of settlement agreements

How would a settlement agreement terminating an IP infringement dispute be scrutinised from a competition perspective? What are the key factors informing such an analysis?

Settlement agreements terminating an IP infringement dispute may fall within article 101 TFEU and article 2 of Law No. 287/90, which prohibits anticompetitive agreements.

According to the Commission’s Technology Transfer Guidelines, a no-challenge clause, contained in patent settlement agreements or non-assertion agreements, does not constitute in itself a restriction of competition, given that it is inherent to such settlement agreements. Such no-challenge clause would, therefore, be unlikely to fall within the scope of application of article 101 TFEU and article 2 of Law No. 287/90.

However, the Technology Transfer Guidelines also state that such clauses may fall within the above prohibition provided by article 101 TFEU (and article 2 of Law No. 287/90) if they cannot be considered inherent to the settlement but rather the result of the licensor’s offering financial incentives to the licensee not to challenge the validity of the IP rights (eg, ‘pay for delay’ agreements related to generic entry).

Therefore, the circumstances under which the parties agree such no-challenge clauses would need to be assessed on a case-by-case basis, taking into account the overall market context.

Further information on competition law issues related to patent settlements is provided in question 24.