EPLAW PATENT BLOG

IT – Claims limitation of a granted patent in PI proceedings

Posted: December 19th, 2022

Introduction
With Decision of 29 November 2021, the Court of Milan addressed the issue of the admissibility under Italian law of claims limitation of a granted patent in preliminary injunction (“PI”) proceedings.

The relevant provision is Article 79 of the Italian Intellectual Property Code (“IPC”), pursuant to which a patent can be limited in three ways: by filing a request for patent limitation with the Italian Patent Office (“IPO”) (para. 1); during invalidity proceedings (para. 3); and (for European patents) following the limitation procedure provided for by the EPC (para. 3-bis).

Summary of the case
Bossini S.p.A. is the owner of European patent no. 2896758 (“Patent”), granted on 3 April 2019 and validated in Italy on 27 June 2019, which concerns a mixer group with detachable hand-held shower for dispensing water.

On 21 May 2021, Bossini started PI proceedings against Remer Rubinetterie S.p.A. (“Remer”), claiming the infringement of its Patent by certain products marketed by Remer.

Remer requested the court to dismiss Bossini’s PI petition, arguing that the Patent was invalid for lack of novelty and non-infringed and that in any event the case lacked urgency because Remer’s devices had already been marketed for approximately three years.

During the technical expert assessment, on 7 October 2021, Bossini filed a request for Patent limitation with the IPO pursuant to Art. 79(1) IPC.

The court appointed expert (“CAE”) did not examine the Patent as limited and, in his report, concluded that the Patent as originally granted was invalid for lack of novelty. The decision does not clarify why the CAE did not examine the Patent as limited. There might be several reasons for this: for example, Bossini might not have informed in time the CAE of the filing of the request for limitation, or the request for limitation could have been filed with the IPO while the CAE was drafting his final report, and thus when the deadlines for the parties to exchange technical briefs or to submit observations to the CAE’s preliminary report had already expired.

However, at the final hearing, which was held after the filing of the CAE’s report, Bossini asked the court to order the technical expert assessment to be supplemented to assess whether the Patent as limited was valid and infringed.
Remer opposed Bossini’s request.

The court decision
The court rejected the PI petition for the following reasons.

The court held that the prima facie likelihood of success requirement was not met for the following reasons.

Firstly, the court pointed out that the CAE found that the Patent as originally granted was invalid and at the final hearing Bossini did not challenge the CAE’s conclusions but focused only on the Patent limitation.

Secondly, according to the court, by filing a request for limitation with the IPO, Bossini basically admitted the invalidity of the Patent as granted, and in fact it is established case law that requests for patent limitations pursuant to Article 79 IPC constitute a waiver by the patent owner of the scope of protection conferred by the original claims and therefore of the arguments submitted to the court to defend the validity of the claims before the limitation (see also Court of Milan decision no. 7548 of 5 July 2017).

The court also stated that Bossini’s request to order that the technical expert assessment be supplemented taking into account the Patent as limited was inadmissible.

Even if in the case at stake the Patent had been limited by filing a request for limitation with the IPO pursuant to Art. 79(1) IPC, the court considered also that under Art. 79(3) IPC the patent owner can submit a request for patent limitation also to the court in “invalidity proceedings”.

The court pointed out that the expression “invalidity proceedings” in Art. 79(3) IPC must be interpreted as meaning “invalidity proceedings on the merits”, and therefore the provision does not apply to PI proceedings. Moreover, in the court’s view, Art. 79 IPC is a “special provision that seriously conflicts with the general principles of the proceedings and also risks questioning the constitutional guarantee of reasonable duration of the proceedings under Article 111 of the Constitution”. Therefore, Art. 79 IPC must be interpreted strictly.

The court further noted that patent limitation does not simplify the technical assessments and investigations to be carried out, but rather introduces new topics of investigation, thus radically modifying the subject matter of the dispute. In the court’s view, this conflicts with the requirements of speed and effectiveness of PI proceedings.

Conclusion
While the majority of Italian scholars and case law agree that Art. 79(3) IPC applies only to invalidity proceedings on the merits, nothing prevents the patent owner from limiting a granted patent (or a patent application) though the administrative procedure pursuant to Art. 79(1) while PI proceedings are pending. However, the question arises as to the effects of such limitation on the pending PI proceedings, especially if a technical expert assessment concerning the patent (or the patent application) before limitation has already been conducted. In particular, it is questioned whether such limitation could lead the court to order the technical expert assessment to be supplemented so as to take into account the patent (or the patent application) as limited before the IPO.

Some scholars and case law argue that there is no reason to exclude this and that, in any case, in PI proceedings account must also be taken of the claims and arguments that the parties will likely put forward in the following proceedings on the merits (which will necessarily concern the patent or the patent application as limited), in order to avoid that at the end of the PI proceedings measures are granted or denied on the basis of erroneous or partial assumptions.

However, other scholars and part of the case law, as the decision at stake, argue that ordering the technical expert assessment to be supplemented so as to consider the patent as limited is incompatible with the requirements of speed and concentration of PI proceedings, especially considering that usually requests for limitation are filed with the IPO to overcome invalidity objections after the filing of the CAE’s report, and thus at a very advanced stage of the proceedings.

Therefore, in PI proceedings, the patent owner facing invalidity attacks raised by the respondent could file a request for patent limitation with the IPO before the beginning of the technical expert assessment, so that the CAE’s report would directly concern the patent as limited.

However, this choice entails some downsides, as the patent owner would file the patent limitation before even knowing whether, in the CAE’s and/or the court’s opinion, the invalidity attacks raised by the respondent are grounded. Alternatively, the patent owner could immediately start an action on the merits. Proceedings on the merits, however, certainly have a downside, as the likely timing is significantly longer than that of PI proceedings.

A copy of the decision (in Italian) can be read here.

Summary: Giulia Pasqualetto and Maria Giulia De Rosa, Bonelli Erede

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