On 14 August 2019 the Supreme Court of Cassation (Decision 21402) reversed a Milan Court of Appeal ruling on patent limitation. The Supreme Court of Cassation found that although the Milan Court of Appeal had held the patent at issue to be valid, it had not granted the patentee's claims for infringement because the patent had been subject to a limitation procedure and the acts of infringement had been carried out before the application for limitation had been filed. As a result, the Supreme Court of Cassation granted the appeal and ruled as follows:
Where a European patent granted for Italy is subject to a limitation procedure before the European Patent Office, the protection shall be deemed to be defined by the content of the limitation with retrospective effect, irrespective of the invalidity that affected the original claims later amended through said procedure.
The case was referred to a different composition of the same Milan Court of Appeal (ie, with different judges to those who had issued the reversed decision) to decide the infringement claims and in particular to rule on the alleged damages and disgorgement of the infringer's profits.
It was hitherto uncertain under Italian case law whether the effects of limitation could be retrospective from the date on which a patent became effective in Italy or whether such effects should take place only from when the application for limitation was filed. The first solution, now shared by the Supreme Court of Cassation, was handed down by the Court of Milan's Company and IP Specialised Division (Ruling 9889) issued on 5 October 2018 (for further details please see "Court of Milan clarifies retrospective effects of patent limitation during civil proceedings"), in which limitation was asked for during the course of legal proceedings concerning an Italian patent. However, the same court and the court of appeal have also issued opposite rulings (with the Supreme Court of Cassation reversing the latter).
The Supreme Court of Cassation's decision to overturn the Milan Court of Appeal's ruling drew on the following rules:
- Article 69(2) of the European Patent Convention (which was applicable because the patent at issue was the Italian part of a European patent), according to which:
the European patent as granted or as amended in opposition, limitation or revocation proceedings shall determine retroactively the protection conferred by the application, in so far as such protection is not thereby extended.
- Article 56 of the Italian Code of Industrial Property, which provides that:
if the patent is subject to opposition or limitation proceedings, the scope of protection established by the grant or by the decision to maintain it in a modified form or by the decision to limit it shall be confirmed from the date on which the mention of the decision concerning the opposition or limitation is made public.
Indeed, the term 'confirmed' makes it clear that the protection deemed valid following the limitation had existed from the outset.
- Article 105c(3) of the European Patent Convention, which provides that:
the decision to limit or revoke the European patent shall apply to the European patent in all the Contracting States in respect of which it has been granted. It shall take effect on the date on which the mention of the decision is published in the European Patent Bulletin.
The same reasoning applies – as the Supreme Court of Cassation made clear in the grounds for its ruling – considering that the pronoun 'it' at the beginning of the last sentence refers unequivocally to the noun 'decision' in the previous sentence. This clarifies that only the European Patent Office's (EPO's) decision takes effect from the publication of a decision, whereas the subject matter of a decision (ie, the limitation) and, therefore, the text of the claim as amended in the limitation procedure under Article 105b of the European Patent Convention, produces its effects from the beginning of a patent's life, which is logical, because it is a limitation (ie, a measure that reduces rather than extends the scope of a patent's protection).
In view of these rules, it is therefore unquestionable that the Milan Court of Appeal's ruling (which the Supreme Court of Cassation reversed) had not been decided in accordance with the law, as the court of appeal had held that, until the date of acceptance of the EPO's proposed limitation, the patent in question was null and void in its entirety, even for the scope of protection confirmed by the limitation itself.
The Supreme Court of Cassation ruled in relation to a European patent which had been limited in administrative proceedings under the centralised procedure provided for in Article 105b of the European Patent Convention and therefore the rules referred to in the decision commented on above are European Patent Convention rules. However, the substantive arguments put forward as to the grounds for the decision also apply to the limitation provided for at the national level by the Industrial Property Code, which provides for:
- an administrative limitation procedure (Article 79(1) and (2), with an application to be filed with the Italian Patent and Trademark Office); and
- a judicial procedure in proceedings where the validity of a patent is challenged (Article 79(3), which specifies that the application can be filed at any stage and level of the trial, therefore also during proceedings before the Supreme Court of Cassation).
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