With the decision no. 7708/2014 dated June 11, 2014, the IP Court of Milan issued an important decision over patent claims reformulation during a validity proceeding.

Under article 79, paragraph 3, of Legislative Decree no. 30 of 2005 (hereinafter, in short, "CPI"), patent holders have the right to reformulate disputed claims in the course of validity proceedings “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 at stake, the IP Court of Milan was asked to declare the invalidity of three Italian patents and two Italian patent applications, owned by a competitor, and to ascertain that the product manufactured and sold by the plaintiff did not infringe the contested patents. The defendant filed a counterclaim of infringement for two of the mentioned patents, seeking damages and an injunction.

Within the expert witness phase, the defendant filed an application, signed by its legal representative, aimed to reformulate the contested patent claims under article 79, paragraph 3, CPI.

As a preliminary step, the Court of Milan had to decide on whether article 79 CPI was applicable to proceedings started before its entry into force in 2010.

In this regard, the Court departed from the previous Milan Court case that held that patent limitation produces extrajudicial effects, representing a partial waiver of the scope of patent protection. Differently, the Court clarified that the provisions of article 79 CPI are of a procedural nature, since they “regulate a party’s power within judicial proceedings”, and therefore shall be applied to proceedings that are already pending at the date of their entry into force.

As to the patent validity claims, the Court found that the amendments submitted by the patent holder were within the limits of the patent application as originally filed and did not extend the protection conferred by the patent as granted. In particular, with regard to the first of the disputed patents, the Court found that, while the former version of the patent was invalid, the amended version was valid. In this case, the amendments submitted during the proceeding turned out to be decisive for assessing patent’s validity. Instead, as to the second patent contested by the defendant, the amendments, although accepted by the Court, were not decisive, as the Court found that both the initial and the amended version of the patent claims were valid.

In conclusion, the Court of Milan stated on patent validity as follows: i) declared partially invalid the first patent in its version as originally filed; ii) rejected the request for declaration of invalidity of the second patent; and iii) granted the amendment of both patents as filed during the proceedings.sx