Grounds for refusal of a probative search in IP matters: a decision by the Milan IP Court

Court of Milan – IP Section, Judge S. Giani, Order of 2 August 2017, docket no. 27991/17).

In a recent preliminary order, the IP Section of the Milan Court restated some basic principles in terms of requirements for the granting of urgent probative searches in IP litigations under Italian law (a topic we already discussed in a previous article ).

One of the urgent remedies available under the Italian IP code is the so-called descrizione (literally, “description”), corresponding to the French saisie-contrefaçon, a typical measure for the preserving of evidence concerning an infringement and its extent.

If granted, it is carried out with the aid of a court bailiff by entering the alleged infringer’s premises – or even a third party’s premises – and collecting evidence by any appropriate means: expert witness’ and bailiff’s reports, photographs, making digital or hard copies and collecting samples. The measure in special circumstances may be granted ex parte, giving the applicant the advantage of surprise.

In the case lodged with the Milan Court, an Italian company, owning a national patent concerning a method for the manufacturing of PVC window frames, assumed that a Polish competitor was advertising and selling on the Italian territory, through a network of distributors, products infringing on the patent. It therefore applied for the urgent granting of a preliminary description of the competitor’s products, as well as the means of their production and the relevant documentation, to be carried out at the defendant’s Polish headquarters, on the grounds that the evidence was necessary to support proceedings on the merits, was not attainable otherwise and was in danger of being compromised.

The defendant replied that the allegedly infringing products were freely available on the Italian market, hence the applicant could have obtained a sample with ease. It further remarked that the European patent application for the same invention had been granted only by virtue of a substantial limitation of the original claims, following the examiner’s adverse findings on novelty, inventive step and sufficient disclosure, whereas the national patent in suit had been granted without any preliminary research of prior art.[1]

The Court rejected the application. In giving reasons for the refusal, the proceeding Judge made a number of preliminary remarks. She preliminarily stated that, although the requirement of prima facie case takes a special meaning in connection with descriptions (as it relates to the actual need of the evidence sought, rather than to the likelihood of success in the merits proceedings), this does not exempt the Judge from a summary assessment of the merits of the case. The difference is that, in the case of the description, this assessment is less rigorous than for precautionary measures directed at the immediate enforcement of IP rights, in the sense that it can lead to a dismissal only if there are reasons to positively consider the applicant’s success on the merits unlikely.

The Judge also considered that the Enforcement Directive (2004/48/ EC) has laid down a general obligation for remedies aimed at enforcing intellectual property rights to be “fair and equitable”, “not unnecessarily complicated or costly”, “proportionate” and applied “in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse” (Article 3).

In light of these premises, the Judge found that in the case before her there were “substantial” doubts about the very validity of the patent in suit. Specifically: (i) the fact that the patent had been granted by the Italian Patents and Trademarks Office without any prior art search led to to a “lessened” presumption of validity; (ii) as the defendant had pointed out, the European patent application, which initially had the same scope as the Italian patent, had been granted only following a major amendment of the claims, which would make it prima facie likely for the national patent to be at least partially invalid.

In addition, it was not disputed that the allegedly infringing products were freely available on the Italian market, and thus a sample could have been obtained with substantially lesser costs than those likely to be required in order to carry out the description abroad; it followed that the measure sought not only did not appear “necessary” for the preservation of evidence, but it appeared neither fair nor proportionate, as well as “unnecessarily complicated and costly”.

In refusing the application, the Judge ordered the applicant to pay court and legal fees.

Note for the reader: the author is not aware of any appeals against the order discussed here.

[1] Italian patent applications undergo a prior art search only as of  July 2008.