(Written with Andrea Balsamo – Provvisionato & Co.)

A recent ruling of the IP Court of Milan (Judgment no. 7708/2014, published on 11/06/2014) provides a few insights on the issue of patent limitations in the course of proceedings before Italian courts under Article 79 paragraph 3 of the Italian IP Code (as amended in 2010 to mirror provisions in Article 138 of the EPC). Article 79 paragraph 3 gives patent holders the right 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 the case discussed here, a major Italian hardware maker had asked the IP Court of Milan to declare three Italian patents and two Italian patent applications, owned by a direct competitor, invalid and not infringed by a kind of door lock that the former manufactured and sold. The defendant had filed a counterclaim of infringement for two of the patents in suit, seeking damages and an injunction.

The Court appointed an expert witness to provide an opinion on the invalidity and infringement of the two patents in question (invalidity claims relating to the other patents were postponed for discussion in separate proceedings). Before the expert witness filed his report, the defendant submitted an application, signed by its legal representative, to amend the claims of both patents under Article 79, providing a set of new (amended) claims for each.

The first issue that the Milan judges had to address was the applicability of the new provisions on patent limitation in the case before them, which was challenged by the plaintiff on the grounds that the proceedings were already pending at the date of their entry into force.

The judges, while acknowledging that patent limitation produces extrajudicial effects (constituting a “partial waiver of the scope of patent protection” and thus resulting in the “limitation of the range of one’s right”), departed from previous case-law of the same Court by ruling that the provisions in Article 79 are of a procedural nature, since they “regulate a party’s power within judicial proceedings”, and can therefore be applied to proceedings initiated prior to their entry into force.

On the merits of the amendments submitted by the patent holder, the judges found that, for both patents, the amended claims were within the limits of the application as filed and did not extend the protection conferred by the patent as granted.

In particular, the main claim in the first patent had been amended by adding technical features that could all be found, in the Court’s view, in the original claims and drawings. These amendments turned out to be decisive for assessing validity. The Court – upholding the expert witness’ opinion – found that while the former version of the patent was invalid, the amended version withheld.

In the other patent in suit, claim no. 1 had been amended by adding part of the technical features contained in claim no. 2. In this case the amendments, although accepted by the Court, were not decisive, as the Court found that both the previous and the amended version of the patent were valid (again, agreeing with the opinion of the expert witness).

When ruling on validity, therefore, the Court: i) declared the first patent partially invalid “in its original version”; ii) rejected the request for a declaration of invalidity of the second patent; and iii) granted the amendment of both patents as submitted in the course of the proceedings.

It would thus appear that in invalidity proceedings, according to the Milan IP Court, the partial invalidity of an amended (limited) patent must be declared during proceedings, if its version before the limitation was invalid.

It is also worth noting that the Court stated that claims amendments submitted in judicial proceedings must be signed by a legal representative of the party and may only be revoked by an equivalent document to the contrary. The defendant’s counsel had in fact not included the patent limitation in their final submissions to the Court, but the judges ruled that no express or implied choice by a party’s counsel could override that of the party itself. The Court also hinted at the possibility of the patent holder filing a conditional claim amendment in the event that the original patent is found to be invalid.

On infringement, the amendments made under Art. 79 of the IP Code did not help the case of the patent holder, consistent with the limiting nature of the amendments themselves. With regard to the first patent in particular, the Court found that the alleged infringer’s products did not present one of the technical features defined in the main claim of the patent as granted and, therefore, did not infringe either the original or the amended version. On the contrary, the Court found that the second patent was infringed in both the original and the amended version, since the plaintiff’s products (also) presented the additional feature included in the latter. On these grounds, the Court declared (only) the second patent infringed, issued an injunction against the plaintiff and awarded damages to the defendant.