When faced with a non-validity argument under Italian patent law, the patent owner can choose to narrow their patent claims. Niccolò Ferretti looks at the implications.
On September 2, 2010, Legislative Decree No. 31 concerning the revision of the Italian Industrial Property Code (CIP) entered into force. The amendments meant a real revision of existing law, aiming at granting a more effective protection of IP rights and boosting competitiveness of the Italian economy. In particular, the new Article 79 CIP set forth the possibility for a judge to reformulate a patent claim, at the request of the patentee and if the reformulated claim occurs in a narrower form with reference to the patent application as originally filed. The Article 79 CIP previously in force did not provide any such option to amend the content of the claims during a pending action for nullity (in fact it was necessary to wait for the ruling of the judge and the res iudicata effect).
The new solution allows an adequate balance of two interests – the removal of unjustified monopolies and the promotion of innovation. Actually, the incentive to innovate would be seriously undermined if the inventor was punished with the complete loss of the protection for their invention, for instance in the case of discovery of “new” prior art, capable of determining the partial invalidity of the patent. Such a penalty, on the one hand, would lead to significant uncertainties as to the existence of the protection and, on the other hand, would be unfair, due to the impossibility for the inventor to obtain a complete knowledge of the prior art. Request a free trial to read more.