Licensing In Foodstuffs And Agrochemicals

This essay by Simona Cazzaniga has been organised taking into consideration two principal elements:

the object of license contracts under consideration in the present workshop, namely, foodstuffs and agrochemicals;

the Italian regulatory framework which, beyond that of the European Community or that which derives from the European Community regulatory framework, must in any event be taken into consideration for licenses of trademarks, patents and know-how relative to foodstuffs and/or agrochemicals produced or sold in Italy.

With respect to the Italian regulatory framework, therefore, two categories of laws relative to or applicable to license contracts will be examined:

SECTION I

Those of general coverage, and/or those which implement the European Community Directives, taking care to highlight possible peculiarities of the Italian system:

Licence Contracts

In the context of the phenomenon of globalisation and the process of harmonisation undertaken by the European Community, licenses of trademarks, patents and know-how relative to foodstuffs and/or agrochemicals are subject to substantial regulatory control. Issues such as public health, consumer protection, the environment, international trade policy, national sovereignity and regional development have a direct or indirect impact on the freedom of commercial operators in the foodstuffs and agrobusiness to produce and sell their products on the global market. Even the most simply drafted license contracts may contain elements or create obligations that are impracticable or prohibited in target markets. Therefore, in order to protect the business interests of those commercial operators, considerations of the viability of licensing agreements within the European regulatory framework, and, specifically, within the national regulatory framework of the target Member State (in this instance, Italy) must be made before such agreements are drafted.

Exemptions For Technology Transfer Agreements

EC Regulation 240/96 relative to the application of EC Treaty Art. 85(3) (now, after the Treaty of Amsterdam, Art. 81(3)). Today the foodstuffs and agrochemicals industry is increasingly characterised by the technologies utilised, which are normally protected by patents and/or industrial secrets. It is common knowledge that a well-managed commercial strategy exploiting a secret formula, recipe, or method of production can determine the success of the product as much as a winning marketing strategy. At the same time, however, the development of large industrial corporate groups or the establishment of commercial distribution or franchising accords among independent companies often entails the transfer of that technology by means of license agreements. These kinds of coordinating activities could potentially have the effect of preventing, restricting, or distorting competition in a particular product market (as prohibited by Art. 81(1) EC Treaty). Given, however, that the transfer of technology and know-how is generally acknowledged as a significant contributing factor in the improvement of the production of goods and in the promotion of technical and economic progress (as provided by Art. 81(3) of the EC Treaty), qualifying agreements promoting the protection and utilisation of such technology have been exempted from the prohibition.

As article 1346 of the Italian Civil Code: "the object of a contract must be possible, lawful, determined or determinable" the European Regulation provides that the know-how must be well described in the text of the contract or in an attached document, and in any event, no later than the moment of signature.

Otherwise the contract is void and the eventual amounts paid must be return as "unjustified enrichment".

Therefore in order for the contract to be valid the know how has to be:

- "not obvious" and "useful";

- "secret" and well protected;- "fixed on material support".

Please note that, in case of violation of the above rules, criminal sanctions could apply such as fraud, fiscal elusion, illegal exportation of currency, etc.

Contracts of "Subfornitura"

Law no. 192/1998 is the new statutory framework regulating out sourcing agreements. Prominent among its provisions is Art. 9 (originally intended to be included within the Italian...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT