An interesting decision was recently issued by the IP Court of Milan in preliminary patent infringement proceedings. The petitioner, following the submission of a Court expert witness’ opinion that had ruled out the validity of the patent, applied for a limitation of the original patent and asked the Court to require the expert witness to provide his additional opinion on whether the defendant had infringed the new version of the patent resulting from such limitation.

Patent limitation in Italy is regulated by Art. 79(3) of the Italian IP Code, which states: “in invalidity proceedings, the patent owner may submit to the judge, at any stage of the proceedings, a reformulation of the claims remaining within the limits of the patent application as initially filed and not extending the protection conferred by the patent as granted.”

In the decision commented upon here, the Court, first of all, stated that the request for patent limitation by the relevant owner: i) amounts to an admission of partial invalidity of the patent as granted; and ii) entails the waiver of the claims, made in the proceedings, based on the validity of the patent as granted. In other words, in the judge’s opinion, by requesting the limitation, the petitioner had admitted the invalidity of the patent originally enforced before the Court, which necessarily led to the dismissal of the petition without the need to assess infringement.

The judge also agreed with the defendant’s statement that reformulation of claims under Art. 79(3) is only possible in the context of ordinary proceedings aimed at obtaining a declaration of invalidity of the patent. As a consequence, the request for limitation and consequent expert witness’s additional opinion on the infringement of the limited patent was considered inadmissible.