Pages 269-281

NATIONAL JUDGES' PRESENTATIONS

IT Italy

Massimo SCUFFI - Presiding judge and member of the Board of Appeal of the Italian Patent and Trademark Office - Recent developments in European and national patent law and case law¹

1. The Italian framework and judicial protection of IPRs

It is established that a European patent is a "bundle" of national patents, each subject to the grounds of invalidity and infringement provided by the legal system of the country in which it has effect. In Italy, disputes involving European patents are governed, in accordance with the lex fori applicable to the national portion of such patents, by the rules of the Italian Industrial Property Code (IPC),2 and fall within the exclusive jurisdiction of specialised IP courts (of first and second instance)3 set up in 12 judicial districts of high economic activity4 and composed of selected judges with significant experience and expertise in IP matters.

This system was recently reformed by the Italian legislator,5 who, encouraged by the excellent results of these courts, decided to improve their geographical distribution throughout the whole Italian territory and extended their competence inter alia to company law and competition law. As of September 2012, there are 21 "courts of enterprise", as they are now known, seated in Italy's regional capitals.6

In addition, new rules, also applicable to patent proceedings, have been introduced to reduce the excessive length of proceedings,7 such as:

• an admissibility "filter" for appeals that may result in a finding of a prima facie lack of a reasonable chance of success (a system similar to the Anglo-Saxon "leave to appeal");
• a total ban on late submission of new documents, even if they are essential, unless the party can demonstrate that he or she could not have submitted them at first instance for reasons other than his or her negligence (although the Italian IPC allows appointed experts to receive new documents from the parties, even if they were not previously submitted);
• limitation of appeals to the Supreme Court of Cassation, now allowed only on the grounds of a violation of law, excluding contradictory or lack of reasoning.

The activities of the courts dealing with patent cases focus mainly on "provisional measures", granted on the double condition of fumus boni iuris and periculum in mora, and structured in full compliance with the provisions of TRIPS8 and TRIPS plus.9

The main precautionary measures are the "description" (an order for securing evidence), the "seizure" (seizure and description can be requested in the same deed, one dependent on the non-acceptance of the other), and the "preliminary injunction" (a restraining order in the form of an injunction to abstain; it is supported by fines for non-compliance or delay (astreintes) and reinforced by the publication of the decision in newspapers and magazines). Such measures are also required by holders of pending applications or in the period when the European patent is waiting to take legal effect in Italy prior to the filing of the translation.

The last revision of the Italian IPC (the case law was not unanimous before) allows parties to require a declaration of non-infringement, also as a precautionary measure.

The range of provisional remedies includes "freezing" injunctions and orders to disclose the financial, commercial and banking documents of the infringer; "recalling" goods from channels of commerce; filing claims against third parties who possess infringing goods or are involved in their manufacture in order to obtain information on the goods' origin and distribution by means of a formal examination subject to criminal penalties.

Some of these urgent procedures are characterised by "stability", which means that, even if an ordinary trial action is not filed by a certain deadline at the instance of the defendant, the provisional measure does not lose its effect.

The procedure is similar to the Dutch kort geding or the French référé and there is no obligation - at least for the preliminary injunction - to start full proceedings afterwards (although the TRIPS Agreement and the Enforcement Directive make proceedings on the merits mandatory).

All these measures may be granted ex parte and ad horas (but they must then be confirmed, modified or revoked after hearing all the parties within 15 days of issue of the order concerned) and can be appealed (without suspensive effect) within 30 days before a panel of three judges (obviously, the judge who ordered the contested measure cannot sit on this panel).

Summary proceedings often lead the parties to settle disputes, because the relevant measures are accompanied by all the guarantees of full litigation.

Even before litigation is started, it is possible to obtain, through the court, a rapid technical assessment of patent validity, infringement and damages, and submit a request to the President for the appointment of an expert to give a preliminary evaluation of the issues to be examined in the pending action.

This system makes it possible to find a mutually acceptable solution that, once reached, is incorporated into a specific document embodying the agreement which receives the exequatur of the judge.

Once infringement has been established in proceedings on the merits (following rejection of the claim/objection that the patent is invalid), the court is entitled to impose civil sanctions ("corrective measures") such as final injunctions, publication of the relevant parts of the judgment, definitive removal and destruction of infringing products, transfer of the property to the patentee and compensation of damages.

Actions for the compensation of damages are increasing in Italy and three criteria are provided for setting the compensatory amount, taking into consideration all the adverse economic consequences and moral damages.

Basically, these criteria are the costs and the loss of profits endured by the IPR owner, the "disgorgement" of the profits earned by the infringer (such criteria are alternative rather than cumulative, because in the continental law system damages are compensatory only, not punitive), and, finally, the amount of negotiated or reasonable royalties.

2. The relationship between EPO procedures and the national proceedings

For Italian IP courts, EPO proceedings are a solid reference point for determining whether provisional measures must be granted or denied,10 although they are not then bound in subsequent proceedings on the merits by the EPO's conclusions, which do not preclude full (re-)evaluation of the validity of the patent in the light of national legislation (as a natural consequence of the "splitting-off" of the European patent - once granted - into multiple national patents governed by multiple national laws and protected by multiple national litigation systems).

Technical investigations carried out and legal opinions expressed at European level, or, more generally, the body of case law based on the experience of the boards of appeal generally play a significant role in precautionary proceedings, where the matter is too urgent for the appointment beforehand of an expert for an initial technical opinion on the validity of the contested patent.

It should be noted, incidentally, that the Munich Convention does not provide for co-ordinating criteria such as those enacted for Community rights.

Therefore, there is no provision for a stay of national proceedings while administrative or judicial EPO proceedings, in particular post-grant (belated) opposition, are pending.11

The EPO boards of appeal cannot be regarded as comparable to the national courts of the member states. They are bodies of the international organisation in which they operate12 and as such cannot stop the judicial proceedings aimed at granting autonomous protection to the national portions of European patents.

At the moment, the only remedy for the co-ordination of procedures (and for saving time) seems to be asking for an acceleration of the European procedure.13

3. Cross-border proceedings

Italian case law does not establish pan-European jurisdiction for the grant of cross-border protection for European patents whose national portions have been infringed in the various member states.

It is deemed that a decision on infringement is closely linked to a decision on validity, which must be preliminarily ascertained in the light of exclusive jurisdiction pursuant to Article 16(4) of the Brussels Convention (now Article 22(4) Regulation (EC) 44/2001).14

Nevertheless some Italian courts have taken a different approach when it comes to securing evidence in urgent cases, citing Regulation (EC) No. 1206/2001 on judicial co-operation with a view to having an order for "description" executed in another member state in relation to infringing products of foreign origin discovered at an Italian distributor.

In the context of so-called "torpedo actions", this practice has always been blocked by various decisions on the merits for the following two basic reasons:

• in the legal system created by the EPC, national courts have jurisdiction only over the national portion of the European patent and are therefore not entitled to issue a declaration of non-infringement regarding activities outside their own country;15
• the enforcement of Article 5.3 of the Brussels Convention requires the occurrence of a harmful event, whereas the person seeking a declaration of non-infringement is essentially denying any such event, so that it is impossible to derogate from the general principle of the defendant's domicile.16

4. Patent interpretation and the file history

In patent interpretation, the Italian courts follow the "claims system" whereby European patents are interpreted within the limits of protection as determined in the light of the "scope" of the claims.17

Such a system is adopted for all categories of patents and is based on the EPO rules of interpretation, according to which the extent of a patent's protection is determined solely by the claims (which, however, must be interpreted in the light of the description and drawings) so that protection cannot be granted for any matter disclosed in the specification but not claimed.

With regard to claim construction, the "file history" (or PHE - prosecution history estoppel) is not completely followed in the Italian case law, which is consistent with the approach whereby documents included in the application file are not to be considered an additional criterion for judicial interpretation because disclaimers or limiting statements in grant, opposition or revocation proceedings count only if they are reflected in the final text of the patent.18

National cases in which the file history has been taken into account (on the basis, for example, of documentation produced in the course of the European application procedure in response to the European examiner's objections or regarding limitations made during European prosecution) are still few in number.19

However the "inventive concept" cannot be reconstructed ex post by defensive deductions of the parties or technical investigations of court-appointed experts but must be derivable from a clear and complete description of the invention.

It has been established that the enquiry into the scope of patent protection cannot result in a rewriting of claims on the basis of the prosecution history with a view to circumventing the effect of prior art, as this would amount to introducing elements of uncertainty.20

5. The doctrine of equivalents

The file history is strictly complementary to the doctrine of equivalents, which does not have a generally agreed definition.

The case law of the Italian IP courts has not reached a specific creative consensus on the point of equivalence and is still fragmented.

In practice, the jurisprudence follows the US triple test approach (FWR: same function, same way, same result), although some decisions also highlight the importance of expert opinions on the invention's content, and these two approaches are frequently combined.21

It should be added that the average technician to be taken as the standard for determining the issue of equivalence is not an individual who can merely apply solutions provided by the prior art; rather, he must also be sufficiently competent to elaborate on that prior art, provided such elaboration would not exceed normal skill.22

The distinction between essential and non-essential features of an invention remains fundamental in identifying the "inventive concept" and establishing whether it was copied in its "original and characteristic elements", independently of the external characteristics or accessories and secondary elements (even when improving).23

The Italian Supreme Court has held that there is a violation even when only some features are copied if they represent the characterising part or the "heart" of the invention with the consequence that the variations (of product or process) implying the use of that part of the invention constitute an infringement.24

The Italian case law aims to reach a compromise in the evaluation of the invention "as a whole", without neglecting the "individual elements" of the claims which maintain their fundamental function in the patent interpretation.

It has been stated that the elements of the invention are to be considered not only analytically but also synthetically in view of the technical problem solved by the patent because a comparison restricted to the single elements would result in a simple verification of structural differences.25

Such a distinction cannot be found in the new EPC 2000 provision in the amended Protocol on Interpretation, according to which: "For the purpose of determining the extent of protection conferred by a patent, due account shall be taken of any element which is equivalent to an element specified in the claims." This rule seems to confirm the need to examine equivalency more in relation to every single element than the "general inventive concept".

Equivalence requires an "affinity" of variants that have to be obvious, conceptually similar and non-inventive. The Supreme Court stated that equivalence has to be excluded when the contested solution, leading to the same result, is creative and offers a solution "not evident or repetitive" of the patented one.26

The Italian IP divisions have confirmed this principle more than once, so it can be said that, for the purpose of equivalence, not only must there be no overlap in the different solutions to the same technical problem, but also the alleged infringing device must not supply an original solution with respect to the existing one.27

6. Evolutionary and contributory (indirect) infringement

If an infringement by equivalence is possible only when the allegedly infringing device is obvious, infringement cannot be excluded when that device is the result of an inventive activity that makes use of the solution of the prior patent by simplification or improvement.

This is the case with evolutionary infringement, which occurs when neither the consent of the prior patentee nor a compulsory licence has been obtained for the "dependent" invention.

Precedents can be found in the Epilady jurisprudence,28 but some of those issues are now taking on new dimensions in patent litigation concerning "standard essential" patents and FRAND (fair, reasonable and non-discriminatory) licences, with the associated implications for competition law.

Finally, it is important to mention contributory (indirect) infringement, which is an area in constant evolution.

The Italian IPC has no specific rule on matters relating to indirect infringement but provides for the liability of third parties such as interposed persons or intermediaries; judges are also accustomed to applying the general principle of "concurrent liability" in the commission of a civil tort.

The Italian case law has granted provisional measures to deal with the "means" used for the realisation of infringing goods, and these can also be enforced against a supplier who knew (or was in a position to know) that those means had been used.29

However, full evidence of such knowledge is required if the means could also be used for other, non-infringing applications, whereas knowledge is implied if those means are "unmistakably intended to be used" for the infringing purpose.30