Amendments to a patent? Yes, not always a counterfeiting

By judgment of 24 January 2017 no. 885, the Court of Milan faced the hard theme of the possibility to amend the claims of a patent during the proceedings, as foreseen by Article 79 of the Code of the Industrial Property.

Sometimes, the amendment to a patent’s claims  during a judgment is necessary when the patent having the original claims risks to be declared invalid for being anticipated by similar patents. Vice versa, limiting the area of protection – and consequently the claims – the patent can be valid although the limitation.

Here an example. If someone patents a “pot” and after it realizes that the pot does already exists, it is possible to limit the application by not asking the protection for the pot in its whole, but for a “pot with its lid”, if such combination is new. After this limitation, competitors are allowed to produce a “pot” but they are prevented to produce a “pot with its lid”: on the one hand, the right will be limited but exercisable, on the other hand, if the patent is invalid, even the second effect would be impracticable.

The law allows to expressly limit a patent even during the processing, “at any stage or instance of judgement”.

The Court of Milan established that when such an amendment is made, it is necessary to stick to “good faith” and that

The limits of a patent should be clearly and unequivocally predetermined to be opposed to third parties, or the rules of competition and legitimate expectations of third parties shall be violated”.

As a consequence, when reaching a hard and light limitation of the claims, it is not possible to recognize the protection of the patent from the day of the filing itself

but limited to the time of the reformulation expert would consider in compliance to the of requirement of patentability (also in compliance with the Court of Milan 5377/2015)”.

It follows that, according to this point of view, the counterfeiter could be consider responsible for the damages coming from its behavior only from the day of the ascertain validity of the limitation presented during the proceeding by the owner of the patent and not earlier.

It is a very important principle which we have already discussed in an article written in 2014 for “Notiziario dell’Ordinanza dei Consulenti in Proprietà Industriale” that is confirmed in this judgement.