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18 February 2019
On 5 October 2018 the Court of Milan Companies and IP Specialised Division found three companies guilty of infringing a patent owned by Saima Sicurezza spa, which is part of the Saima Group and a leader in the access control and security systems sector, in which it has operated for 30 years (Judgment 9889). The patent in question concerns an innovative system for managing passenger access to transport vehicles.
The patent was held to be valid based on the claims that the owner had made during the course of the proceedings under an application for limitation under Article 79 of the Industrial Property Code. In addition to pronouncing the corrective measures against infringers provided for under the Industrial Property Code, the court also ordered the three companies to pay damages and surrender their profits, appointing an accounting expert to calculate the amounts due.
The court also ordered that compensation be paid and for the disgorgement of profits for products sold before the patent limitation application was filed. The Court of Milan clarified that the retrospective effects of the patent's limitation carried out in the course of the proceedings also concerned the ascertainment of the infringement and, accordingly, the order to pay damages or the disgorgement of profits. In this way, a previous, more restrictive approach was overcome, which excluded that damages were due for conduct prior to the filing of the limitation application.
In previous rulings, the Court of Milan and the Milan Court of Appeal appear to have held that the protection of third-party trust in a patent as granted requires that the limited patent be considered enforceable against said third parties only from the moment that the limitation was requested. However, this interpretation was criticised, because Article 79(3) of the Industrial Property Code excludes the possibility that limiting a patent may affect the trust of third parties, as it requires that the reformulation of limitation claims "remains within the limits of the content of the patent application as initially filed and does not extend the protection conferred by the patent as granted".
Therefore, if limitation is admissible and satisfies the two requirements indicated above (as ascertained by the court-appointed expert in the Court of Milan case), it implies for third parties that the scope of protection of the resulting patent is foreseeable and narrower than that of the original. As a result, a third party cannot invoke its "blameless ignorance" of this scope of protection. In other words, the limits of Article 79(3) of the Industrial Property Code guarantee third-party rights, preventing the latter from being faced with a broader exclusive right or one aimed at protecting an invention that an expert in the field would not have deduced unequivocally from the patent description.
This conclusion is in line with what happens at a European Patent level for limitations made before the European Patent Office (EPO), since Article 69(2) of the European Patent Convention explicitly states that the effects of limitation are retroactive to the time of filing the patent application and that "limitation or revocation proceedings shall determine retroactively the protection conferred by the application, in so far as such protection is not thereby extended".
This provision also clarifies the meaning of Article 105(b)(3) of European Patent Convention, which provides as follows:
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 pronoun 'it' at the beginning of the second sentence unequivocally refers to the noun 'decision' in the previous sentence, clarifying that only the EPO's decision takes effect from the publication of the same, while the subject matter of such a decision (ie, the limitation and, therefore, the text of the claim as amended in the procedure under Article 105(b) of the European Patent Convention) is effective from the beginning of a patent's existence because it is a limitation (ie, a measure which does not broaden, but reduces the scope of the patent's protection).
This decision further aligns the Italian legal system with its EU counterpart, confirming the attention to detail of Italian judges and their reliability in patent cases.
For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email (firstname.lastname@example.org). The IP Law Galli website can be accessed at www.iplawgalli.it.
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