ITALY – PATENT CASE LAW

In patent validity proceedings, the patent holder can exercise the right to amend disputed claims only before the hearing for the specification of the pleadings.

Wood and pellet stove manufacturer Thermorossi S.p.A. brought proceedings before the District Court of Milan against several competitors for infringement of its European patent No. EP 2 083 221 concerning “heating devices such as pellet stoves and heating stoves”.

During proceedings the court ordered a technical expertise to assess the validity and infringement of the patent, at the end of which a hearing for the specification of the pleadings was held.

Following the hearing, and after the opposition division of the European Patent Office had decided to limit the patent, Thermorossi chose to submit a modified version of its patent under Article 79(3) of the Italian Industrial Property Code, which allows the owner of a patent to submit to the court, in the course of validity proceedings, amendments to disputed patent claims within the limits of the patent application as originally filed and not extending the scope of protection conferred by the patent as granted.

In its decision No 11544 of 30 June 2016, published on 20 October 2016, the Milan District Court found that the new version of the patent submitted by Thermorossi, which had limited the scope of protection of the patent by making substantial changes in the claims, was not admissible because it had been submitted after the hearing for the specification of the pleadings, during which the “thema decidendum” had been definitively settled. The court found that in the light of the reasonable duration of proceedings according to Article 111(1) of the Italian Constitution, the right to submit an amended version of the patent cannot be exercised after the hearing for the specification of the pleadings.

The court therefore assessed the patent’s validity according to the text originally approved by the European Patent Office, an Italian translation of which had been the base for the Italian Patent and Trademark Office’s grant of the Italian portion of the patent. The court held invalid the Italian portion of European patent No. EP 2 083 221 and consequently rejected all of Thermorossi’s infringement claims.

This decision offers guidance on a delicate aspect the Italian procedure for patent limitation during validity proceedings, and points out how time limits can be of essence for patent owners wishing to submit amended claims under Article 79(3) of the Italian Industrial Property Code.