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Technical consultancy

In cases where the validity of a patent is called into question, the most important preliminary activity is to evaluate in historical and technical-juridical terms the factual elements offered by the parties which tend to prove, or not, the existence of the legal requirements. The administrative act certifying some of the requirements of the content of the patent application, which concludes in the grant, certifies that the patent is enforceable, even for penal purposes. Therefore all the owner or assignee has to do is draw on the assessment documented in the patent certificate to prove the validity of his right, and thus it is up to the person who asserts the non-existence and invalidity of the patent right to give proof of this. For such reasons, art. 77 L.I. states " The burden of proving nullity or cancellation of a patent for an industrial invention lies in every case with the party challenging the patent". It must be noted that such presumption of validity of the patent does not regard the legitimacy of the administrative deed of the grant, but refers exclusively to the procedural phenomenon of reversing the burden of proof. Proof can be obtained either through court appointed, or official technical consultancy (OTC) or through other means such as the rejection of a parallel application by the European Patent and Trademark Office. An official technical consultancy, according to Italian regulations, is not a preliminary means available to the parties, nor can it be initiated to compensate for their inertia. There are two possible ways to initiate an official technical consultancy.

1. The first is so-called traditional technical consultancy. In this case, the judge, having heard both parties, nominates one or more technical consultants (OTC), who assume the authority of assistants to the Judge. To these the judge entrusts one or more queries and establishes a term within which they must submit their conclusions. During their enquiries, which must be carried out respecting all the rights of the parties according to Italian judicial regulations, the parties have the right to be assisted by technical consultants for each party (PTC). A general rule is that the technical consultant may not investigate facts that are substantially different from those put forward by the parties: this principle is partly eased as it is not necessary for all the elements of such facts to be deduced specifically and proved in advance, it being sufficient for the facts themselves to be seriously possible and convincing. The OTC can therefore request information, even from third parties and without prior authorization from the judge, in order to check facts that are closely linked to the object of the investigation. The result of this, with the aim of assuming probative value, must contain the indication expressed by the parties. The OTC may also have recourse to the help of an expert, for whose actions he is responsible. The judge may accept the conclusions of the OTC, in which case he need only indicate the source of his conviction, or disregard them, in which case he must explain a logical and adequate reason for his disagreement. It must be remembered that technical consultancy can also be initiated ex officio, because it does not constitute a violation of the principle of the availability of proof given that consultancy represents an investigating means to which the judge may always have recourse ex officio when the decision of the case requires particular knowledge or investigation of a technical nature, for which the elements already gathered in the course of the trial appear insufficient.
2. The second path is that provided by art. 25 E.P.C.. According to art. 25 E.P.C., which derives from a provision of Dutch patent law, the European Patent Office is obliged, upon payment, and on the request of the competent national court of a member country which judges cases regarding an infringement or nullity dispute, to supply a technical opinion regarding a European patent that is the subject of such a dispute. The Federal Republic of Germany also has a norm corresponding to the Dutch model, even though the task assigned to the German Patent Office is more limited. According to art. 25 E.P.C., the examination division must supply a "technical opinion", in other words, it must be limited to technical aspects, bearing in mind that, as regards nullity or infringement, the effective decision is under the exclusive jurisdiction of the national court. More generally, the examination division must endeavor to give a technical opinion on all technical questions that are normally dealt with in the course of the European examination procedure, even when these questions cover both judicial and technical aspects. The examination division must however refrain from making particular statements concerning the validity of the patent or its possible infringement. In the same way it must express no opinion regarding the extension of protection (art. 69 E.P.C. and protocol relating to this). During the procedure according to art. 25 E.P.C., the parties can be represented by their own PTC.
3. Other means of proof. Art. 77 L.I. establishes no limitation regarding means of proof and so cases on validity and invalidity of patents can be proven, besides with the Official Technical Consultancy, with any other means of proof. Therefore, the statement contained in the description of the invention attached to the patent application, according to which the invention claimed includes a very simple solution to a technical problem, has the same probative value as a confession outside the hearing as per art. 2735 C.C.. Again, proof can be obtained by presumption, as in the case where an invention has been published, for example, in foreign magazines in such a way as to be appreciated by a person skilled in the art before the application has been filed. Even testimonial evidence is admitted, for example to show a previous use of the invention which constitutes disclosure. Testimonial evidence may also have a negative content, that is, it can exclude the prior presence of the invention on the market. A sworn statement produced by the patentee containing a comparison between the invention and the prior art deduced from the content has the value of a one-sided defense and is duly considered so by the judge.

The OTC (Technical Consultant)

The Court appointed, or official, technical consultant (OTC) is a judicial figure introduced by the Code of Civil Procedure presently in force and replaces the court expert, a judicial figure provided by the 1865 code. The official technical consultant does not limit his action to drawing up a report which reflects his opinion on one or more questions, but rather "lends assistance" to the judge for the execution of single acts or for the entire trial. To understand what the OTC's role is in a dispute regarding patent rights or industrial property, it is necessary in any case to collocate his role in an "ordinary" civil trial. The OTC is considered an auxiliary figure of the judge, that is, he is one of those who, even though they are not part of the judicial department, assist the magistrate by performing functional and sometimes substantially jurisdictional tasks. This figure is necessary in order to supply the judge with the necessary instruments in order for the latter to form an exact opinion, also in questions of a highly technical content for which the magistrate would need a specific preparation which he does not possess. It is for this reason that the object of evaluation of the OTC must always be of a technical nature without ever deviating into judicial evaluations. When the judge entrusts an investigation of this type to the OTC, the solution to the dispute must always be based on evaluations formulated autonomously by the judge, that is, without these being based on the expert's report.

The term "Court appointed technical consultant" emphasizes two characteristics:

1. that he is a subject called to advise the judge with non-binding reports;
2. that he is a technician, that is, an expert in those subjects that the judge is not expected to know about.

The task of the OTC is to state the facts of the case and provide the judge with technical explanations that the latter deems suitable to ask him, but he does not have the task of making up for the inertia of the parties in proceeding with their probative burden. In fact, consultancy is not a means of proof, but a means of judging already acquired facts. Therefore the parties may not request an official technical consultancy with the aim of ascertaining the existence of unproven facts, since these facts must already have been shown at the time when the official technical consultancy is requested, as the latter may only provide a technical evaluation of these facts. According to some legal judgments, it can sometimes happen that the official technical consultancy provides elements of proof. This occurs when:

1. the data to be proved can only be detected with the aid of particular tools and/or knowledge;
2. consultancy takes the place of judicial inspection in the event of the latter having to be carried out with the assistance of a consultant or when the intervention of the latter is necessary because of the substantial nature and the technical characteristics of a work;
3. it is necessary to verify facts relating to the operation of a high technology plant, the official technical consultancy becomes, in addition to a tool for its evaluation, a necessary means for its investigation and description.

However, the official technical consultancy can never concern the evaluation of the content of a contract, or of facts which could be subject to testimonial evidence, nor can it concern evaluations or interpretations of the content of judgments. In the field of patents the following guidelines should be noted:

1. an official technical consultancy on the validity of patents cannot be ordered on purely explorative grounds, to subrogate assertive or probative activities for which the relative parties are responsible;
2. an official technical consultancy does not constitute a preliminary means of an inquisitional nature, therefore the judge cannot use the work of the OTC to establish the priorities to be examined;
3. in an official technical consultancy the defendant summoned for infringement does not fulfill the burden of proof when, excluding nullity for pre-disclosure, he only provides the OTC with the names of some foreign entrepreneurs among whom to carry out investigations, without providing documentation on the characteristics of the products and procedures adopted as invalidating priority;
4. the petition to admit an official technical consultancy with the goal of ascertaining the nullity of a patent for industrial models cannot be accepted if it is not accompanied by documents on which the technical assessment can be carried out;
5. the burden of proof for lack of originality of the invention must contain the reconstruction of the state of the prior art, leaving the evaluation of the inventive level of the invention to the OTC depending on his specific competence in the field.

The granting of a technical consultancy is left to the discretion of the judge, whose ruling, if adequately motivated, cannot be censured by the Court of Cassation. However, the judge has the duty to justify his refusal to accept the petition for the official technical consultancy, when this is of decisive relevance in the decision. In the event the judge decides not to have recourse to the assistance of the OTC, he must show with adequate explanations that he could have solved all the technical problems connected to the evaluation of the relevant elements essential to the decision, as he cannot reject the petition to admit an official technical consultancy and consider as unproven the facts that the consultancy could have ascertained, without committing the mistake of insufficiency and inconsistency of motivation. Recourse to technical investigation falls within the discretional powers of the judge in question. As such, it can be exercised without the obligation of explanations. Any negative ruling cannot be censured when the convincing elements, to disregard the request of the party, come from probative findings that have already been acquired and evaluated with a decision immune from logical and judicial flaws. When technical consultancy is requested by one party with the aim of investigating facts that are essential to the decision, with respect to which this is presented as a more efficient and functional investigating instrument, the judge cannot deny it without rebutting with suitable motivation the reasons adopted by the party on the basis of the petition and cannot reject the substantial claim by observing that with that request the burden of proof has not been carried out. If the decision of the dispute depends solely on the resolution of a technical question, because the fundamental facts cannot be otherwise proved or certified, the judge on the one hand cannot not use technical notions of common knowledge nor order technical investigations and, on the other, refuse the request because the facts, which could only have been certified by having technical knowledge, have not been proved, without committing the mistake of insufficiency and inconsistency of motivation. It is in any case inadmissible to have recourse to the Court of Cassation, with which it is possible to challenge an admissible preliminary ruling of the official technical consultancy.

The choice of the Court appointed technical consultant

The Court appointed technical consultant, or technical consultants, in the event of a panel of experts being nominated, must, according to the regulations, be entered in the appropriate register divided into categories, kept at each court and presided over by the chairman of said court. When particular technical expertise is considered necessary, the judge can even appoint a person entered in the register of a different court or not entered in any register as a consultant, in accordance with the opinion of the chairman of the court and with a nominative ruling. The failure to observe these rules does not invalidate the nomination, since their function is to direct, and they are not obligatory. The official technical consultancy. can be entrusted even to a person not entered in a professional register when the parties do not oppose this, but it may not be entrusted to a person who is not in possession of the necessary professional qualifications, unless both sides agree to recognize his technical expertise. In the appeal proceeding, the same OTC who lent assistance in the first instance may be nominated, though the parties have the power to challenge this.

Activity of the Court appointed technical consultant

In carrying out his duties in the field of Patents and Trademarks, the OTC is not limited to evaluating only the technical aspects, but can also technically reconstruct the facts as proposed by the parties; however, he must not take upon himself the burden of proof, for which the parties are responsible. The OTC must collaborate with the judge both in hearings and in chambers, providing any explanations when requested. His activity may also extend beyond hearings and even to other jurisdictions. All the OTC's activity must be carried out bearing in mind the limits fixed by the judge in the dispute and therefore must concern facts that are precisely indicated by the parties and transformed into questions that are put to him by the parties and by the judge, on questions very closely linked to the object of the technical investigation. The official technical consultant, being bound only by the judge's request, is not required to make any assessment requested by the consultant of either party, nor to widen the investigation when he has acquired sufficient judicial elements. In carrying out the duties entrusted to him, the official technical consultant can avail himself of the work of specialized experts, drawing on their conclusions, in his report, having evaluated them responsibly, with the aim of acquiring, by means of the necessary technical support, all the judicial elements which permit him to give the judge a more informed opinion. To have recourse to the work of specialized experts the OTC does not require the prior authorization of the judge, nor a formal nomination, nor the subsequent swearing in of the same experts, since the result of their investigation goes under the scrutiny of the consultant himself, and of the judge; however, the parties retain the power to propose deductions and observations concerning the investigations, as used in the technical report. The observations that the technical consultant adds, with an appropriate appendix to his own report, before filing the same, form an integral part of this. Although the interested parties have the opportunity to examine and refute these observations, they can be used by the judge as the basis of his decision. If the report is given in an oral rather than written form it does not imply nullity of the official technical consultancy, as art. 62 C.C.P. expressly provides for such a report in hearings by the technical consultant regarding the investigations entrusted to him. Declarations made and information supplied by third parties to the OTC in the course of his investigations concerning facts closely connected with the object of the investigation are not valid in any way, even less so if they are gathered when the judge is not present, such as real testimonial depositions; however they do have, even when neither side contests, an appreciable investigative value. When the consultant has indicated the names of parties who have been freely summoned, the judge, who must evaluate every assessment of the OTC exceeding the limits given to him, can consider these assessments as elements of proof, or invite the parties to prove, positively or negatively, such circumstances. The OTC may not, without the consent of the parties, consider documents that have not been acquired at the trial, as in this case it would not be a question of using simple factual elements, but of evaluating a document that could have been used in the case, only in the case where the judge, on the specific request of the parties, had ordered it to be used and had certified its substantial formal validity. The consultant authorized to carry out investigations without the judge being present must communicate to the parties in sufficient time, as per art. 90, the day, time and place of the beginning of operations, guaranteeing the parties' presence. No particular form is laid down for this communication, which can also be verbal; in the event of the communication being given by means of a statement inserted in the minutes of the hearing, the absence of the defending lawyers is irrelevant, as the content of such minutes is presumed to be known and does not have to be communicated to the parties and no communication has to be given to the absent party. The Court of Cassation has stated several times that communication is obligatory with exclusive reference to the initial phase of the operations carried out by the experts, and so this does not apply to every subsequent investigation which the consultant himself considers necessary: it is the responsibility of the parties themselves to follow how the various phases develop. In the event that the consultant postpones operations to a date to be established and then takes them up again without informing the parties and their consultants, directly or through the court clerk, it is necessary each time to assess if this has been potentially damaging and if it has effectively prejudiced the parties' defense or not. When there is a violation of the defendant's rights, since he has not been placed in a condition where he can follow and check the OTC's operations, the examination will be declared null. The violation of the defendant's rights in the execution of the technical consultancy gives rise to relative nullity of the report, and therefore this must be asserted in the first motion or defense after the report has been filed, otherwise it is amended. Possible nullity cannot be thrown out by the judge ex officio, nor for the first time at the appeal level.

Minutes and report

Art. 195 C.C.P. states that "minutes should be taken of the investigations made by the consultant when these are carried out with the intervention of the investigating judge, but he may also order the consultant to draw up a written report. If the investigation is carried out without the intervention of the judge, the consultant must draw up a report in which he must also include the parties' observations and claims. The report must be sent by the consultant to the parties appearing within the period ordered by the Judge with a ruling given at the hearing pursuant to article 193. In the same ruling, the Judge fixes the deadline by which the parties have to send their own observations on the report to the consultant, and also the deadline, before the following hearing, by which the consultant has to file, with the Clerk of the Court, the report, the observations by the parties and a synthetic assessment thereof.".

From the text of this article it has been deduced that the written form is not essential, but the documentation of the activity carried out by the OTC is; it thus derives that:

1. if the OTC acts with the intervention of the judge, the documentation relating to his activity will be noted in the minutes of the clerk of the court, but if postponements and observations concern complex questions, the judge can order a report to be drawn up. It has also been claimed that if the findings of the investigation are inserted in the minutes, they remain the work of the OTC, and remain distinct from the investigation; consequently, whereas the minutes constitute proof until an action for falsification is filed, the findings of the OTC, as he is not a public official, can be contested by any means of proof;
2. if the investigation is carried out without the intervention of the judge, the OTC must draw up a report, even orally in a hearing. In such a case there is the obligation, for cross-examination purposes, to insert the observations that the parties have made directly or through their technical consultants.

Jurisprudence maintains that if the parties' observations are not inserted into the report by the OTC, this does not constitute grounds for nullity, as long as it is clear that these were taken into consideration. The term that the judges indicates for filing the report is non-peremptory: it can therefore be extended and non-compliance does not mean that the consultancy is nullified. However if the OTC's report on which the judge founded his conviction is filed after the case has been remitted to a panel of judges, the procedure is annulled on the grounds that the right to cross-examination has been infringed. Moreover if the term for filing is not respected it can constitute just cause for replacing the OTC, as per art. 196 C.C.P. If the judge does not fix such a term pursuant to art. 289 C.C.P.: "the investigating proceedings which do not contain the date of the next hearing or term by which the parties must conclude, they can be integrated, on the request of one party or ex officio, before the peremptory term of six months from the hearing in which the rulings were pronounced, or from their communication or notification if so prescribed…". "The judge still has the authority to order the investigation to be renewed and, for serious reasons, the technical consultant to be replaced" art. 196 C.C.P.. A precondition for renewing the investigation is that the results of the consultancy that has already been carried out are insufficient or unsuitable. When, on the other hand, the report or the minutes are not clear, there will be no renewal order but simply a request for clarification. If the request to renew the investigation (or to summon the consultant for clarification) is rejected, the judge is not obliged to justify his decision at length, as it is sufficient for him to recognize the results already achieved as exhaustive, considering that the reasons which convinced him not to admit such investigations are adequately contained in such acknowledgement. Jurisprudence has stated that when the defendant, for reasons of necessary or permissive jointer of parties, executes a prejudice of his right of defense without having taken part in the consultancy operations, the judge must renew the same consultancy, since he cannot take a decision towards the defendant on the basis of what has been carried out in his absence. It is considered that the Court appointed OTC must not inform the consultant of the parties of new investigations ordered following the request of clarifications after the report has been filed. The appeal judge too, when he considers the results of the consultancy that has already been carried out in the first degree are exhaustive, is not obliged, even when one of the parties specifically requests it, to order the renewal of an investigation already carried out, nor is he limited to a specific rebuttal of the request, since he need only re-state that the elements that have already been acquired are sufficient. "When he considers it appropriate, the chairman of the Court invites the technical consultant to attend the debate in front of the panel of judges and express his opinion in chambers in the presence of the parties, who may clarify and develop their reasons through counsel" according to art. 197 C.C.P.. Calling the OTC to chambers is merely at the discretion of the chairman of the panel of judges and if this is not done, it does not represent a procedural error. If this power is exercised, the parties who can develop and clarify their reasons through their counsel and their consultants must be called, since it is thus that cross-examination is carried out. Both the Court appointed OTC and the consultant of the parties must retire to chambers before the deliberation of the case begins as per art. 276 C.C.P.. Even when invited to attend the debate, the OTC is an assistant to the judge and can ask the parties for clarification.

The function of the OTC, recusal and responsibility

"The technical consultant chosen among those entered in a register must give his services, unless the judge acknowledges that there is a just cause for abstention. The consultant can be challenged by the parties for the reasons indicated in art. 51. The judge who appointed the consultant is the only person who can make a judgment on the recusal." ex art. 63 C.C.P.. The OTC can refuse the assignment only when there is a valid reason for abstaining, as his obligation derives directly from the law. The task of deciding whether the reasons presented by the OTC are just, in other words dictated by the interest of the service and not personal interests, is entrusted to the judge. It has been claimed that nullity of the consultancy is not valid if the OTC should have abstained and failed to do so. The reasons for challenging the OTC are the same as those for the judge; the investigating judge will be the person to decide on requests for abstention, recusal or the non-acceptance of the assignment. "The consultant must respect the provisions of the penal code regarding experts. In any case, the consultant who incurs gross negligence in the execution of the acts that are requested of him, will be punished by up to one year's imprisonment and a fine of up 10.329,00 €. Art. 35 of the penal code is applied. In any case, compensation for damages caused to the parties is due." ex art. 64 C.C.P.. In addition to the responsibility provided for by said article, the OTC is subject to disciplinary responsibility as per the provisions of the Code of Civil Procedure and professional laws, both because he is entered in the register of OTCs and because he belongs to the professional guild or board. The norms of the penal code which concern the responsibility of experts are applicable to the OTC. Gross negligence is necessary in this case if the OTC is to be held responsible. An example of gross negligence could be the loss or destruction of the contentious object or documents entrusted to the OTC; gross negligence is also valid when the consultancy seems unreliable. It is doubtful, however, whether it is valid in the event of an error even if this is due to manifest malpractice. In the event of gross negligence compensation for damages is also due, irrespective of whether a pecuniary punishment has been applied. Damages however must always be proved