Region: Italy

File wrapper estoppel trumps infringement under doctrine of equivalents

The Court of Milan recently held that the text of a European patent application and the applicant’s actions during the prosecution history of the application limiting a claim to a compound’s specific salt form precluded a finding of infringement – including under the doctrine of equivalents – by other salt forms.

20 December 2017

Lessons in unfair competition and misappropriation of confidential information

The Court of Milan recently held that the use of images that are highly similar to those of products shown in a competitor's catalogue constituted unfair competition, and that the use of non-identical technical drawings was insufficient to establish a claim of misappropriation of a competitor’s confidential information.

06 December 2017

Revised EPO guidelines on computer-implemented inventions

The European Patent Office Guidelines 2017 recently entered into force. Like the previous edition, this year’s guidelines include substantial, extensive and comprehensive improvements with regard to guidance on the eligibility of computer-implemented inventions parts.

15 November 2017

UIBM’s novel approach to finding sufficient spread between SPREAD and SPREAD

The Italian Patent and Trademark Office recently ruled that when two trademarks include the same word element but the graphic context is sufficiently different, a likelihood of confusion may not exist.

08 November 2017

Effective use of Community design protection

Featured in IAM Yearbook 2018

Design protection has taken on an increasingly important role in recent years, since appearance and exterior shape now play a fundamental role in the success of a product. Designs are now relevant to a wide range of products involving industry,…

12 October 2017

Supplementing your understanding of supplementary protection certificates

A recent finding of invalidity has raised the question of whether a supplementary protection certificate (SPC) application can refer to a third party’s first market authorisation in the absence of a specific contractual relationship between the SPC applicant and the first market authorisation owner.

11 October 2017

Supreme Court recognises punitive damages

The Supreme Court of Cassation recently recognised for the first time that punitive damages may be applied in connection with civil liability under Italian law. The decision may allow Italian judges more leeway to grant increased damages in actions brought before Italian courts.

02 August 2017

When reverse engineering is difficult, infringement of software trade secrets is confirmed

Confirming a judgment by the Court of Turin, a recent Court of Appeal decision provides useful guidance for the application of Articles 98 and 99 of the Industrial Property Code, which governs trade secret misappropriation.

12 July 2017

Class 35: registering retail and wholesale services at the UIBM

Since 2016 the Italian Patent and Trademark Office (UIBM) has taken a harsh stance on registrations for ‘retail and wholesale services’ in Class 35. During this time, the UIBM has consistently refused to register applications directed to these services.

07 June 2017

A tale of statues and camels: mass-produced items eligible for copyright protection

The Court of Cassation recently held, in a case involving porcelain statues manufactured and mass-marketed by Italian company Thun Spa, ruled that mass-produced items may include a creative, artistic element, and thus can be eligible for copyright protection.

03 May 2017

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