The suspension of validity and infringement proceedings pending appeal against the grant of a patent: a recent decision of the Court of Milan

On 19 June the Business Chamber of the Court of Milan issued a ruling on patents focusing on the suspension of validity and infringement proceedings pending appeal against the grant of a patent.

The proceedings dealt with a granted European patent, which had also been maintained after opposition proceedings. The opposition decision was then appealed and the relative procedure before the European Patent Office (EPO) was still pending at the time of deciding the dispute in Milan. In that context, the plaintiff, which had acted in order the have the patent declared null and void, asked the trial to be suspended waiting for the decision of the EPO.

In the judgment, the Court points out that “pursuant to article 120 of the IPC (the Italian “Intellectual Property Code”, issued under Legislative Decree no. 30 of 10 February 2005) the suspension is only mandatory when the patent has not yet been granted; whereas, after the grant and on the basis of the presumption of the validity of the granted patents, the suspension is a measure, the appropriateness of which the judge has to evaluate in the concrete case”. In this case, the judges stated that such suspension does not appear to be suitable for two reasons:
i) the proceedings came to a conclusion “after five years of trial and after extremely long and articulated experts’ activities”; and
ii) “the amendment to claim 1 in the opposition proceedings is not relevant in deciding the issue since it was already possible to interpret the original claim on the basis of the patent description, and that claim was also interpreted by the court appointed expert” in the same sense (as far as we understand from the judgment) as that clarified by the amendment.

Thus, the court rejected the requested suspension.

The judgment in question also stands out for having reached conclusions that are different from those of court appointed experts in evaluating the validity and infringement of the patent.

Firstly, while the experts had considered the defendant’s patent to be valid, the judges held it invalid because the product “does not solve any particular and specific technical problem, but, because of its compact form and smaller dimensions, it presents only a greater convenience of application and use”: consequently, it is instead valid as a utility model. For this reason the court accepted the defendant’s request to convert the patent to a utility model.

Secondly, unlike the view taken by the experts, the court decided on the absence of the infringement on the assumption that “if the invention of the defendant has to be granted protection, even in the limited form of a utility model, the protection has to be limited to products that present very similar and not vaguely analogous forms of compactness, and which also have the same characteristics of minor dimensions, because the defendant’s new and protectable idea is substantially limited to those characteristics”.