After an absence of ten years, the Italian Patent Torpedo may be back, creating uncertainty for patent holders and opportunities for those accused of patent infringement.
The Italian Patent Torpedo is a defence tactic where a company under threat of infringement proceedings applies for a Declaration of Non-Infringement (DNI) regarding both Italian and foreign parts of a European patent. In Italy, a country known for its slow proceedings, the filing can frustrate enforcement actions in other European jurisdictions due to litis pendens rules.
The Italian Supreme Court ruled in MGH v Asclepion, where both parties were foreign, that as regards a DNI, Italian courts have jurisdiction over the non-Italian parts of a patent as well. This is a change founded in Folien Fisher, C-113/11, and is a departure from earlier Italian case law.
