Jacobacci & Partners - Italy
According to a recently published decision (SPA Sperotto v BBM Bolpagni SPA), the Court of Turin has decided to stay judicial proceedings concerning validity and infringement of the Italian part of a European patent, insofar as an opposition appeal procedure was pending against the patent before the Board of Appeal of the European Patent Office (EPO). The decision follows a previous ruling by the same court staying the litigation because of pending proceedings before the EPO Opposition Division.
The court held that a "decision on the invalidity of a national or European industrial property right can be issued only if there is certainty about the existence and scope of protection of the property right”. Therefore, the court determined that it was best to wait for a final decision from the EPO and stayed the judicial proceedings under Article 120 of the Industrial Property Code.
Interpreting Article 120
Article 120 of the code states that:
“if the invalidity or infringement action is filed when title has not yet been granted, a judgment shall be issued only after the Italian Patent and Trademark Office has decided upon the application, by examining it with priority over the previously filed applications. The Judge decides, taking into account all the circumstances, to stay the proceedings one or more times, by scheduling with the same ruling the hearing in which the proceedings have to be resumed.” (Emphasis added.)
Thus, a judge may stay a patent trial before the administrative grant of an Italian patent by the Italian Patent and Trademark Office (UIBM). Notably, there is no similar provision in the code with respect to proceedings before the EPO, nor in the regulations that preceded the Industrial Property Code.
Leading legal commentators are of the opinion that a judge should not apply Article 120 of the code to cases where authorities other than the UIBM are involved. Indeed, it is customary for IP courts to proceed with infringement issues concerning the Italian part of a European patent even if opposition proceedings (and possibly opposition appeal proceedings) are pending before the EPO, with later reversal of the judgment being necessary if the European patent is revoked or amended.
The Court of Turin's decision is therefore contrary to prevailing legal opinion in determining that Article 120 of the code “shall also apply when the enforced property right is a European patent, even if this rule explicitly refers to the Italian Patent Office only”. In particular, the court maintained that the phrase 'taking into account all circumstances' means that the judge has discretionary power to evaluate the entire legal and factual situation of the property right, and therefore that Article 120 cannot be limited to Italian patent applications.
According to the Court of Turin, the judge may stay the trial both when the administrative process is still pending and after the property right has been granted, if such property right is still subject to opposition and the judge considers that there is a possibility that the opposition proceedings may end with a decision relevant to the judgment (ie, revocation or amendment of the patent).
At present, it is uncertain whether other Italian IP courts will follow the decision of the Court of Turin. Thus, the possibility of a stay of proceedings should be considered carefully when deciding whether to bring a lawsuit in Italy based on a European patent that is still within the opposition period of nine months after grant. In addition, forum shopping may result, based on varying interpretations of the scope of Article 120 of the code.
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