The Milan IP Court on patent limitations in validity proceedings
On 17 January, the Milan IP Court issued an interesting decision (no. 490/17) concerning patent limitations in invalidity proceedings. The issue, which we have also discussed here on this blog, is regulated by art. 79 (3) IP Code that, in accordance with art. 138(3) EPC, states the following: “In validity proceedings, the patent holder is entitled to submit to the court, at any stage or instance of the trial, an amendment to the claims falling within the limits of the patent application as originally filed and not extending the scope of protection conferred by the patent as granted.”
The case from which the judgment originated stood out for its significant length and complexity, determined by the fact that the patentee had filed four requests of amendment to the claims at various stages of the proceedings, with the consequent need for the judges to request three technical opinions from different expert witnesses and to re-open the evidentiary stage twice. Eventually, with the fourth set of claims, the patentee had been able to get, by the appointed expert witnesses, a confirmation of the validity of the amended patent, which had instead been found null and void in its original version and in the versions resulting from the previous amendments. Hence the judges’ focus on the limits of the possibility to submit amendments and the validity of the same.
The decision at issue firstly confirmed that the patent holder can amend the claims during the proceedings without any restrictions as to the trial stage or instance and to the number of amendments. In fact, “the judge cannot but take notice of the amendment, it amounting to a limitation of the claim put forward in the proceedings by means of disposition of the challenged right. It is a matter of disposition of the right, which the party can always make”. The right to make amendments, however, “cannot be exercised in an abusive and reiterated manner, but it must comply with the principles of due process, in order to avoid a possible excessive duration of the same, requiring continuous and iterative appointments of expert witnesses to provide opinions on the amendments submitted from time to time.”
As for content, the amendment should not necessarily be limited to a mere amalgamation of the claims, “but may consist of additions and specifications drawn from the content of the patent“. However, it is necessary to carefully assess the additions extrapolated from the description and drawings, in order to avoid them providing information which cannot be inferred objectively from the originally granted patent: “The inclusion of features in the claims must adhere to the actual information contained in the original description (…). Only a matter which is obvious in the application as filed, and not merely theoretically compatible with the accompanying drawings, can be inserted in the claims.”
In any case, the judges stated, the patentee must precisely formulate the amended claims to be submitted to the judge, and it cannot propose to the judge (or to the expert witness) alternatives from which they should find an amendment to the claims giving validity to the patent.
The ruling finally focused on the validity of the amended claims, excluding that in the case at issue the amended patent could be considered as valid from the date of grant of the original patent that had been deemed void. In fact, “it cannot be required that the added specifications, details and features were known and foreseen [by a third party] from the original application“, the invalidity of which had led, after hearing expert witnesses for years, to the amendment capable of making the patent valid. It is therefore necessary to “balance the exclusivity of the patent with the principle of legal certainty regarding its scope of protection, taking into consideration that the latter should be determined on the basis of the claims only, and the description and drawings shall serve only to interpret the claims”, (art. 52 (2) IP Code). In essence, the ruling said, “the third party is required to make a diligent reading of the patent and a careful prognosis of its validity, but it certainly cannot be required to divine all potential rewriting of the patent that the holder may carry out under art. 79 (3) IP Code, taking details exclusively from the description and the drawings.”
In the case at issue, the judges noted that “the laborious achievement of an amendment to the claims through multiple technical contributions and successive approximations, passed through many years of litigation, make it impossible to grant patent protection with effect from the original patent grant. That protection shall be granted only as from the date of the amendment meeting the patentability requirements“. The judgment therefore ascertained the validity of the patent for the sole period between the fourth amendment of the claims and the expiry of the patent.
Finally, while not finding the patentee’s behaviour abusive, the judges nevertheless showed hostility to its use of the right to make amendments. On the basis of the initial patent invalidity and of the numerous amendments, they stated that each party should bear its own legal costs, and the patent owner shall bear all the costs of the expert witnesses.