The original Italian version is published onDiritto 24 – Il Sole 24 Ore

Recent decision no. 1887/2017 of the Brescia IP Court dealt with the issue of the prior disclosure of the patented invention making the patent invalid for lack of novelty. This issue is regulated by Art. 46 Italian IP Code, according to which an invention shall be considered new if it does not form part of the state of the art, which comprises “everything that was made available to the public in the territory of the State or abroad by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application“.

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In the dispute from which the decision originates, the plaintiff argued that the defendants’ patents were not valid because the defendant had allegedly marketed machineries (turbines) with the patented features. The Court, however, held that although those products had been marketed, there was no prior disclosure depriving the invention of the novelty requirement, since prior disclosure postulates “at least the potential knowledge by an indefinite number of people“. To the contrary, in the case at issue:

  1. the buyer of the turbine marketed prior to the patenting was an energy producer that, according to the Judges, was “evidently not interested at all in the use of the industrial secrets relating to the machinery acquired, hence it is to be excluded (in the absence of any evidence to the contrary) that its personnel carried out technical investigations aimed at acquiring the unknown know-how relating to the machine“;
  2. the Court expert witness and the parties’ expert witnesses had not been able to verify, through the external examination of the turbine and of the technical drawings, the use of the patented principles in suit, which, the Judges continued, “evidently excludes the prior disclosure of those principles, save the hypothesis of disassembly of the machinery“;
  3. this last hypothesis was considered “very unlikely” not only for reasons stated in point 1 above, but also because of the contractual secrecy and confidentiality obligations undertaken by the buyer of the turbine, “referring both to the product-related information in general and – in particular – to the performance of maintenance works, which were essentially reserved for the supplier as regards the technical-operational aspects exceeding the normal control of the operation of the plant“.