Motion for an Interim Declaratory Judgment by the Alleged Patent Infringer: a Textbook Case (IP Court of Milan Order of 17/02/2014, Docket No. 89649/2013)

In Italy’s IP courts, an alleged infringer can seek an interim declaratory judgment within the framework of summary, fast-track proceedings, in order to swiftly prevent or stop the hostile use of a patent by a competitor.

It’s a remedy granted by Article 120, paragraph 6 of the Italian IP Code, following a 2010 amendment. Among Italian specialists, this type of lawsuit is often qualified as “pre-emptive” action.
The case documented here is a perfect example of the (quite effective) use of this remedy.

An Italian company operating in the field of polymers had seen some of their products being subjected to custom seizure applications based on a competitor’s European patent. The company reacted by filing a motion for urgent relief before the IP Court of Milan, seeking an interim declaration that the (Italian fraction of the) patent in suit was invalid and, in any event, not infringed by its products, as well as an interim injunction against the defendant forbidding any further such actions.

Following the submission of a court-appointed expert witness’ sworn report supporting the applicant’s claims of invalidity and non-infringement, the judge granted the motion. The respondent immediately appealed the decision.
The appeal judges, however, upheld the first-instance ruling. They made express reference to the amended Article 120 of the IP Code, stating that a summary finding of the invalidity of the patent in suit justified an interim declaration of non-infringement. Having then found that there existed the risk of repetition by the respondent of a conduct “which may result in irreparable, and difficult to quantify, harm,” they confirmed the order against the latter to refrain “from undertaking any actions aimed to cause custom seizures of the applicant’s products, which would constitute abuse of right”.

Ordinary proceedings on the merits of the case, which appear to be already underway, might end up the opposite way and thus overturn this summary ruling. Until then, however, the alleged infringer has secured itself against market disruptions by the patent owner.