The Court of Milan on the transformation of a European patent into an Italian utility model
On 12 December the Court of Milan (Business Chamber “A”) issued a judgment in an action for patent infringement characterised in that, in the course of proceedings, the European patent enforced therein had been revoked and then transformed into an Italian utility model, with the particularity that the same European patent already claimed the priority of an Italian utility model, for which there appeared to be a sort of double patenting of the same invention.
More specifically, the plaintiff had requested the Court to ascertain that one of its competitors was infringing a European patent that was licensed to it. In parallel, however, opposition proceedings were commenced before the European Patent Office (“EPO”) against the grant of this patent, which proceedings were concluded in late 2013 with the EPO Board of Appeal definitively revoking the patent. As a result, the holder (and licensor) of the patent filed a request with the EPO for the transformation of the same in an Italian utility model, and then filed the application for the registration of the utility model with the Italian Patent and Trademark Office pursuant to art. 58 IP Code. That application was then accepted, with the granting of the relevant utility model in May 2014.
At that point, in the civil proceedings leading to the judgment under review here, the plaintiff requested that its infringement claims were granted despite the withdrawal of the European patent initially operated – anchoring them to the utility model, which would have saved ex tunc the effects of the patent, even within the narrower limits of a national utility model. By that time, however, the proceedings had arrived at the final phase, as the parties had made their final statements of claims in February 2014.
In the decision under review, the Court first recognised that “art. 58 (4) IP code attaches a retroactive effect to transformation, in the sense that the national application for the utility model is considered filed in Italy on the same date the European patent application is filed“. In the case at issue, however, the original European patent already claimed the priority of an Italian utility model, which meant that, through the transformation pursuant to art. 58 IP Code, the patent’s validity as a utility model was preserved whilst the patent in turn was based on a (previous) utility model. This, the Panel notes, “seems to be a sort of double patenting, even if the comparison between the two Italian utility models in question does not allow to conclude certainly and automatically for the identity—at least partial—of the claimed inventions. Indeed, the text of the claims contained in two documents are clearly different: the first utility model no. 261 163 sets out the set of claims that were included in the European patent application, whilst the subsequent utility model no. 278 051 narrows the scope of protection claimed“.
In this situation, the Court found that not only does the problem arise of the identity or not of the two utility models, but also the issue of the novelty, timeliness and eligibility of the infringement claims based on the plaintiff’s second utility model. The Court noted in this regard that, in the plaintiff’s view, the grant of the second utility model “would qualify as a timely request for a declaration of infringement initially made on the basis of the European patent and then anchored to the new utility model. This effect, however, necessarily requires the ascertainment that the two utility models overlap, since only the ascertainment of this identity would allow to conclude that the originally alleged interference with the European patent (claiming the priority of Italian utility model no. 261 163) coincides essentially with the subsequent claim of infringement of the most recent Italian utility model no. 278051. But this issue has remained unexplored in the proceedings, as it was introduced late and is alien to the perimeter of the proceedings as defined by the initial claims of the plaintiff”. It was precisely for this reason, noted the Court, that the expert witness appointed by the court had not been asked to check this identity.
In light of the foregoing, given the impossibility of comparing the scope of protection of the two utility models, the Court not only rejected all the plaintiff’s claims based on the revoked European patent, but also had to declare those based on the new national utility model inadmissible.