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The revocation of a European patent does not automatically invalidate the effectiveness of the Italian patent relating to the same invention

In a recent ruling, the Court of Cassation adjudged that the simple fact that a European patent is revoked does not mean the matter of dispute regarding the request for annulment of the corresponding Italian portion and of the Italian patent relating to the same invention can be considered settled 8 October 2019

The Court of Cassation – with ruling of the first civil section no. 22984/2019 – annulled a judgement of the Venice Court of Appeal (ordering the referral to a different Section of the Venetian Court) which, with regard to a decision to revoke a European patent, had declared settled the matter of dispute regarding the application for annulment pending in relation to the corresponding Italian portion and Italian patent with the same field of protection.

On the one hand, the Supreme Court noted that the settlement of the matter of dispute presupposes that the parties’ interest in a decision on the application ends following the emergence of a given situation that leads any cause of dispute between the parties to cease to exist. Such a situation could not be said to have occurred in the case examined, where the decision to revoke the European patent was then subject to appeal; which “implies ex se that the reasons for conflict between the parties persist”.

On the other hand, the pending appeal notwithstanding, the Court observed that the European patent – since it consists of a summation of national patents – does not absolve the judicial authority from the obligation to apply the national regulation to ascertain the validity of the Italian portion.

As for the Italian patent, instead, art. 59 of the IPC (Industrial Property Code) provides for its ineffectiveness only when the opposition proceeding against a European patent has definitively concluded with the retention of the European title, since the accumulation of protections is forbidden (the Court highlights how the loss of effectiveness of the Italian title, in any case, can only follow the definitive confirmation of the European title, as not revoked or no longer revocable in an opposition proceeding). On the contrary, where the opposition against a European patent is accepted, this does not determine the automatic loss of effectiveness of the Italian patent, since it “...constitutes an autonomous title, the validity of which must therefore be independently assessed, as the invalidity of the Italian patent cannot be derived from the invalidity of the European patent”.

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