Infringement by equivalents in patent matters: the position of the Italian Court of Cassation.

The Civil Court of Cassation has recently ruled on the notion of infringement by equivalents, consolidating the approach already outlined previously in Order no. 2977 of 07.02.2020.  According to recent case law the assessment of the requirement of equivalence must be carried out objectively, giving greater weight to the patent claims. The old approach defined as the “central definition theory” based on the analysis of the patent as a whole is therefore superceded.

This case originated from an action brought by a company holding a European patent, relating to a process for handling containers of cut tobacco, against a competitor company that had allegedly manufactured machinery infringing its industrial property rights. The action was aimed at requesting a declaration of infringement and compensation for damages in addition to the supplementary sentences.

The Court of Appeal of Venice, confirming what was decided in the first instance, ruled that there was no infringement on the grounds that the competitor’s plant differed structurally from the patented one.

The patent holder therefore challenged the decision on the grounds that the Court of Appeal had concluded its analysis on the literal facts of the claims, without checking whether the variants introduced by the competitor were or were not equivalent within the meaning of art. 52, paragraph 3bis, c.p.i. According to this rule, in order to determine the scope of protection conferred by the patent, it is necessary to take due account of “every element to it’s equivalent element indicated in the claims” (so-called infringement by equivalents).

However, the Court of Cassation rejected the appeal holding that the defendant’s product did not represent a trivial and obvious replacement of the mobile devices claimed in the appellant’s patent, with consequent non-interference with the appellant’s patent rights. Specifically, the Court of Cassation has set out the following principle of law with regard to art. 52, paragraph 3 bis, of the Industrial Property Code “ the judge – called to assess the existence of an unlawful infringement – must first determine the scope of protection conferred by the patent, then systematically identify the individual features of the invention, as expressly claimed in the patent text and then verify if each element so claimed is also found in the accused infringing product, even if only in terms of equivalents, meaning those variants of the invention that can perform the same function as the elements of the patented product, basically following the same path of the inventor and achieving the same result“.