The Italian torpedo is back… Federico Aloisi reviews the latest revival of such claims in the Italian courts.
More than 16 years has passed since July 1, 1997, when the possibility for alleged infringers to file claims before the Italian Courts seeking a Declaration of Non-Infringement (DNI) of foreign patents, was identified and explained1. These kinds of claims were named after the famous underwater weapon “torpedo” for their ability to somehow prevent patentees from fully enforcing their patents in other European jurisdictions until the completion of the Italian DNI case. As we will explain below, Italian torpedo claims were successfully brought by European litigants until 2003, when the Italian Supreme Court ruled them out. This summer, the same Supreme Court issued an interesting decision which revived the tool.
The rise and fall of Italian torpedo
In the nineties, the torpedo was a popular defense in European patent litigation. Under this defense, a party threatened with a patent infringement claim could file a suit before the courts of a Contracting State of the Brussels Convention seeking a DNI of both the national and the corresponding foreign patents (or national and corresponding foreign parts of European Patents (EP)). Request a free trial to read more.