The Forel/Lisec decision of the Italian Supreme Court is the most authoritative precedent in Italian patent law when considering patent infringement by equivalents. However, recent decisions by the Court of Milan and other lower courts as well as the recent amendment of the Italian patent suggest a more tailored approach of the Italian doctrine of equivalence.
In the Forel/Lisec decision, the Supreme Court had held that a contested technical solution was equivalent to and therefore constituted an infringement of a patent if it obviously applied the same idea of the technical solution. It was not equivalent if, although reaching the same final technical effect, it was characterized by an inventive step and thus offered a non-obvious or non-repetitive response to the previous solution exceeding the skills of a technical expert in the field. Only in such case it could be assumed, so the court, that the technical solution was not part of the inventive concept of the patent. The assessment should be based on "the concept of the solution." This approach was presumably influenced by German case law according to which the question on equivalence is "whether a person skilled in the art is able to solve the problem with equally effective means, i.e. to achieve the desired success with other means also leading to the same result." However, whereas the German Federal of Court of Justice based its assessment "on the invention protected by the claims", referring specifically to the "means" adopted by the contested device, the Italian Supreme Court provided for a wider approach.
In a decision of 20 April 2010, the Court of Milan addressed again the issue of equivalence. It held that an allegedly infringing element was equivalent if it performed substantially the same function of the patented element, in the same way and with the same result (so-called triple test: "same function, same way, same result"). The court concluded that the mere fact that the contested device solved the same technical problem and reached the same result was not sufficient to lead to an infringement if the result was achieved in a totally different way.
The approach by the Court of Milan could appear as a return to the U.S. doctrine of equivalents, implicitly discarded by the Forel/Lisec decision of the Supreme Court. However, a more comprehensive examination of the court's reasoning does not allow such conclusion. In fact, the starting point of the assessment remains "the concept of solution" or the "inventive idea" of the patent which should be considered in its implementation through the specific means outlined in the claims. Accordingly, the Court of Milan, rather than departing from the approach of the Supreme Court, completed it with a closer examination of the subject matter of the patent as defined by the claims.
The same interpretation was applied by a number of lower courts' decisions in the last years.
More recently, the rules for assessing the scope of protection of a patent have been revised by the Italian legislator who amended article 52 of the Italian Intellectual Property Code (IPC) which now provides that "for the purpose of determining the extent of protection conferred by a patent, due account should be taken of any element which is equivalent to an element specified in the claims." The new provision narrows the assessment of the equivalence from the inventive concept disclosed in the patent to the specifically claimed solution. However, it does not question the principle established by the Supreme Court that for the assessment of equivalence it needs be considered whether the contested solution offers "a non-obvious or non-repetitive response to the previous solution" in the light of the understanding of a person skilled in the art.
In conclusion, the recent developments of the Italian patent law on equivalence confirm the approach increasingly adopted by the lower courts and make room for an Italian doctrine of equivalence along the lines of the doctrine developed by the German courts.