The Board of Appeals of the Italian Patent and Trademark Office (IPTO) recently issued two decisions (42/08 and 45/08) which reversed two IPTO pronouncements rejecting the validation in Italy of European patents where validation had been applied for in the name of the former patent owner which had ceased to exist due to a merger or had assigned its rights, and where the representative was appointed by the successor in title.
The appointment of the Italian representative by the successor in title was considered legitimate by the appeal board as evidence of the transfer of rights was submitted. Consequently, the petition for validation was considered admissible in both decisions.
The current position with respect to the validation of European patents in Italy may be summarised as follows. Italy is not a member of the London Agreement and a complete translation of the specification is required for national validation of a granted European patent within a term of three months from the grant of the patent.
The national provisions require that the representative be appointed through a power of attorney duly signed by the patent owner. An implicit appointment by virtue of filing instructions received from the patent owner or the European representative is deemed to be insufficient.
Pursuant to Article 56 of the Industrial Property Code, and as a consequence of a strict interpretation of the literary meaning of the article, until now the IPTO has required validation of a European patent to be requested in the name of the patent owner recorded in the European Patent Register at the time of the granting and thus, for the sake of conformity, that the representative be appointed by the same party.
In a number of cases, it may be that the transfer of rights from a patent owner to its successor in title (as a result of a merger or assignment) is neither recorded before the European Patent Office, nor timely notified to the Italian representative charged with national validation.
Such circumstances may result in the petition for validation of a European patent being filed in the name of the former owner of the European patent; only the belated provision to the Italian representative of a power of attorney signed by the successor in title and current owner of the patent rights would bring a transfer of rights to light. Accordingly, the transfer of rights may be recorded at the IPTO only after the petition for validation. So far, this scenario has led to an inescapable trap for the patent holder as it results in the patent holder’s rights being jeopardised by what the IPTO considers to be a fatal irregularity (ie, the discrepancy between the applicant identified in the validation application and the party appointing the Italian representative).
Decision 42/08 of the IPTO Board of Appeals stated that as the representative used the name of a company that no longer existed, even if an irregularity had occurred it was acting in the interests of the actual owner (as a result of a merger), and therefore there was no reason of public or personal interest to justify denying the validation.
Decision 45/08 of the board stressed that the filing of a petition for validation by the former owner, which had already assigned the patent at issue, could be taken as a type of negotiorum gestio, and that the power of attorney signed by the assignee and new owner of the patent should be considered to be a confirmation of the actions of the applicant for validation. The fact that the parties applying for and authorising the petition for validation were not the same should not be considered to be prejudicial to any third-party interest so, even if an irregularity had occurred, this did not justify refusal of the validation application.
It is expected that the board’s ruling will result in the IPTO taking a more lenient approach in future proceedings where validation is erroneously requested in the name of the former European patent owner which had already transferred its rights through a merger or assignment. However, there is no guarantee that the IPTO will accept the board’s interpretation unconditionally.
In light of this, applicants should ensure that the European Patent Register be updated promptly. At the very least, they should clearly represent any transfer history to their Italian representatives well in advance of carrying out validation proceedings.
In summary, where a transfer of rights has occurred and the European Patent Register has not been updated accordingly, it is advisable to submit documentary evidence of the transfer to the IPTO at the time of the validation application in order to support the filing of the petition in the name of the new owner. This should prevent the IPTO from refusing validation on the grounds that the applicant cited in the validation application and the signatory of the power of attorney are different parties.
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