The unenforceability of a European patent in Italy due to the inaccurate translation of the European text: a recent decision of the Court of Milan
The Italian version of this post is also publised on Diritto24 of Il Sole 24 Ore
On 4 March the Business Court of Milan (Judges Ms Tavassi, Ms Gandolfi and Mr Marangoni) published a judgment in a European patent infringement case in which the court was required to assess the weight of the discrepancy between the text of a European patent and the Italian translation enforced therein.
In the case at issue, the defendant had in fact objected that the translation of the European patent originally filed in Italy by the plaintiff did not correspond to the text of the European patent granted, but to a previous version of the same which had been superseded. This was in fact shared by the judgment in question, in which the judges also highlighted that the plaintiff later filed a corrected translation which instead corresponded to the text of the European patent, but was filed one year after it had been granted.
In view of these facts, the court examined the provision regulating the issue, namely articles 56 and 57 of the Italian IP Code (Legislative Decree no. 30/2005 , “IPC”). Article 56 prescribes that the translation of a European patent is to be filed with the Italian Patent and Trademark Office within three months of the publication of the grant of the patent, under penalty of “ex tunc” unenforceability of the patent in Italy. Article 57, on the other hand, states that the patent holder has the right to submit a corrected translation at any time.
However, the court noted that the amendments allowed by art. 57 IPC are limited to cases of “differences arising from mere translation errors or linguistic nuances. The provision does not allow translations which are completely or largely dissimilar to the text of the patent granted in the European Union. Otherwise, invalid patents could be enforced, while the possible correction of any text filed and allegedly referring to a particular European patent would allow abuse by those wishing to extend the boundaries of their patent by filing an Italian translation which is significantly different to what is actually patented“.
In this case, the judgment continues, the differences between the translation and the original Italian text of the EU patent were significant, given that “the translation filed in 2011 by the plaintiff departs from the text of the patent granted precisely in relation to the elements of novelty and innovation which, in the EU assessment, discriminated between the rejection and the grant of the patent application. It follows that the Italian translation filed, lacking precisely those elements of innovation which are actually protected by the patent, cannot be attributed to the same patent granted in the European Union“. As a result, such a translation would not have been appropriate to fulfil the obligation of filing the patent translation provided for by Art. 56 IPC.
On the other hand, no relevance can be attributed to the filing of the subsequent corrected translation: in fact the latter, which indeed corresponded to the text of the granted EU patent, could not be considered a mere correction of the original translation, but was itself the true translation of the patent, which would have to be filed within three months of the patent being granted; and instead, having been filed one year later, was not able to make the patent enforceable in Italy.
In conclusion, the court declared that “no effective patent protection enforceable against third parties exists in Italy, as no Italian translation was promptly submitted that was appropriate to protect the invention“.