The Supreme Court (decision no. 10335 of May 19, 2016) has ruled on the following matter: can two patents refer to the same invention, despite the fact that the relevant claims are different?

The case

In the case examined, Company (A) holds two patents: an Italian patent, and the fraction of a European patent valid in Italy.

Company (B), summoned by Company (A) for infringement of the aforementioned patents, disputed that the plaintiff’  Italian patent is coincident with the fraction of the European patent and, as such, should be revoked in accordance with art. 59 of IP Code (“IPC”).

Article 59 IPC, in fact, reads: “if for the same invention an Italian patent and a European patent valid in Italy have been granted to the same inventor or his successor in title with the same date of filing or priority, the Italian patent, to the extent that it covers the same invention as the European patent, ceases to be in force …. “.

The contested decision

The judges (first and second instance) have dismissed Company (B)’ defense, based on the circumstance that the Italian patent and European patent are different, as to their respective claims; in fact, the European patent presents in its claims two further characteristics, compared to those described in the claims of the Italian patent.

Company (B) has appealed to the Supreme Court the judgment rendered by the appeal judges, arguing that the lower courts erred in assessing the identity of the two patents on the basis on their respective claims. In fact, Company (B) maintained that Article 59 IPC provides for the decay of the Italian patent if it displays “the same invention” of an European patent and not “the same claims” of an European patent.

Patents’ identity and identity of the claims

The Supreme Court highlights that according to Article 52 IPC the scope of a patent depends on its claims. Therefore, if the claims of two different patents are different, the inventions  protected by the two patents are also necessary different, so there is no identity between the two patents.

Moreover, the Court considered irrelevant the fact that Article 59 IPC refers to the identity of the invention and not to the identity of the claims, because “... if the claims relating to two different patetns are different, then also the respective inventions are different and there is no identity between the patents“.