NATIONAL JUDGES' PRESENTATIONS
IT Italy
IT Italy - Massimo SCUFFI - Supreme Court judge - President Aosta District Court - Recent developments in Italian case law
A case involving European patent invalidity
(Turin Court of Appeal: decision 1746/08 dated 4 December 2008)
The Turin Court of Appeal has upheld the decision of the District Court of Turin declaring partial invalidity in respect of European patent EP 0 923 313 of Mars, Inc., concerning a process for the preparation of quick cooking and instant rice.
US multinational Mars had filed a patent infringement suit against an Italian company that applied a similar method for the preparation of rice having the same properties.
The Italian company had defended itself by filing a counterclaim for invalidity of the European patent, which had been endorsed by the judges with respect to some of the patent claims (1, 3, 4, 5 and 13).Obviously the declared invalidity affected only the Italian portion of the European patent.
The case is currently pending before the Supreme Court. The two prior proceedings on the merits (first instance and appeal) took place before the specialised chambers for intellectual property matters, which are judicial bodies with exclusive jurisdiction over patent law matters and are spread over Italian territory in 12 economically significant regions (including Turin).
The decision of the appeal court examines interesting issues of substantive and procedural law and has stated the following principles:
1. An expert opinion submitted in appeal proceedings to refute the technical point of view endorsed by the first-instance decision does not have the value of expert advice, and it is not an expression of the free right of defensive allegation unless it is produced again under specific grounds of appeal in the first appeal pleading.
2. An expert witness opinion must be considered evidence, and accordingly it is a new document that cannot be admitted to the appeal proceedings even if it is essential.
A party wishing to use it must demonstrate that it had been unable to submit the document in the first-instance proceedings for reasons not attributable to its negligence.
3. If a late submission were allowed, any forfeitures of time limits that had already occurred in the previous proceedings would be disregarded, and that would consequently cause an unreasonable delay in the proceedings.
(This interpretation of the late submission of evidence is more rigorous than the interpretation adopted by the EPO with respect to inter partes proceedings.)
4. The request for an expert opinion from the EPO and the exchange of information according to Articles 25 and 131 EPC are included in the unofficial powers of the national judge and they are not subject to forfeiture or foreclosure.
However, it is inappropriate to order the continuation of the investigation through such co-operation where the validity of a patent issued by the EPO itself is being discussed and the opinion of the expert appointed by the court has already been obtained at the proceedings according to the rules of cross-examination.
5. Even with a process invention, attention must be paid to the teaching contained in the patent and embodied in the claims, and it is not admissible to interpret the claims by combining them with external references to private experiments which have not been performed according to cross-examination principles.
6. The dependent claims - linked to the content of the independent claim with limitations and more details - survive the invalidity of the independent claim unless they are based on features absolutely incidental and not functional to the solution of the problem.
7. An invention (patentable) is different from a discovery (not patentable even if implicitly contained in every invention).
One constitutes the expression of a "rule of construction", namely a teaching on specific actions in order to obtain a practical result; the other is limited to the expression of a "rule of knowledge" of natural phenomena.
8. In a process patent, the elimination of one phase of the necessary processing according to the prior art does not represent an advantageous simplification intended to overcome the existing technical prejudice because the mere elimination of what has been discovered to be useless to obtain the same result does not constitute the "rule of construction" which must intentionally accompany every discovery in order for it to be deemed an invention.
(In the case at issue it had been discovered that the "deformation" of the structure of a grain of rice - which is necessary to create holes that allow faster absorption of the water and accordingly faster cooking - was already achieved independently during the "grinding phase", so that the phase of "light compression" of the grains typical of the prior art became unnecessary.
This step has been deemed by the Turin judges not to be an inventive step but merely an unpatentable discovery because no "rule of construction" is added except for the obvious and trivial rule that what has been found to be unnecessary can always be omitted.)