The proof of pre-disclosure in patents according to the Italian Supreme Court of Cassation

In its recent order no. 16314/2023, the Italian Supreme Court ruled on the pre-disclosure proof requirements in patent law, closing a court case that originates back to 2001.

The proceedings originated from an action brought before the Court of Udine by a company active in the production of agricultural machinery, in order to request a declaration of infringement by the defendant company, a manufacturer of agricultural machinery (“stalk choppers”), of a patent owned by the former relating to a “free-wheel shredder device”, together with the order for an injunction and an order to pay damages. The defendant had filed its defence requesting the dismissal of the plaintiff’s claims and submitting a counterclaim for the invalidity of the patent invoked, based on the existence of a machine “equipped with independent free wheels for each stalk cutter unit” which was marketed in 1994, prior to the date of the filing of the patent application, which took place in 1996.

The Court granted the plaintiff's claims and rejected the defendant's claim, the latter appealed against the decision before the Court of Appeal of Trieste, which reformed it only in terms of compensation, redetermining it to a lesser extent.

The patent holder had brought a first appeal before the Supreme Court, in 2018, while the other party responded with a counter-appeal and a cross-appeal. The Supreme Court quashed the decision with a referral, holding that the complaint concerning the invalidity of the patent for lack of novelty and originality should be re-examined on the merits by the Court of Appeal of Trieste.

Following the referral, in 2020 the Court of Appeal of Trieste rejected the infringement claims and upheld the patent invalidity request limited to certain claims.

This decision was, once again, appealed to the Supreme Court, which - with the very recent order analysed here - provided important clarifications concerning the issue of pre-disclosure proof requirements in patent law.

In particular, the patent-holding company had brought the action on the basis of two grounds, while the defendant had also filed a cross-appeal.

With reference to the first main plea, the appellant alleged that the contested decision violated the legal principle that in patent matters, proof of prior art must be rigorously provided by means of technically verifiable documentation. However, in the present case, according to the patent holder, the proof of prior art was based on a single piece of testimony, as opposed to documentary evidence, namely the technical manual of the machine itself, in which there was no indication of the presence of a stalk cutter.

Although the Court held the plea to be inadmissible, it emphasised that, even in patent law, the choice between the various findings in support of the decision is ultimately the decision of the judge of the merits, on the basis of the evidence he considers most reliable. This, moreover, without the need for an explicit refutation of what was not accepted, since all findings and circumstances logically incompatible with the decision adopted must be considered implicitly disregarded. According to the Supreme Court, therefore, the Court of Appeal had freely and correctly evaluated the testimony of the witness, who had reported that he had purchased the machinery before the filing date of the patent, which was largely consistent with the accounting documents acquired during the proceedings.

For its second ground of appeal, the appellant complained that the contested decision failed to take into account the fact that the manual of the machinery through which the pre-disclosure was allegedly carried out was devoid of any indication referring to the stalk cutter device. The appellant also complained about the misinterpretation of the technical expert's report, which had to be moderated by the comparison of the documents acquired and the statements of the witness examined.

The Supreme Court held that this ground was also inadmissible, noting that the manual had been correctly examined by the Court of Appeal and the Court’s technical expert.

Finally, the Court of Cassation rejected the cross-appeal concerning the settlement of costs.