The judgment on the validity of the patent prevails on the judgment of the infringement thereof

The Court of Appeal, with decision no. 15339 of 25 July 2016, has expressed its opinion regarding the relation between different law suits relative to the validity of a patent and the infringement thereof. In particular, the case submitted to the Judges of legitimacy concerned the relation between an infringement judgment, with only a secondary check of the validity of the patent, and a validity judgment of the same patent, concluded with a partial nullity decision, already become final.

In order to better understand the Judges of legitimacy’s decision, it is first necessary to remember that, pursuant to art. 123 of the Industrial Property Code (C.P.I.), the decisions that declare the nullity, even partial, of a patent have effectiveness in connection with all of them when they have been declared with a decision become final.

Moreover, according to what art. 77 C.P.I. states:“The nullity declaration of the patent has a backdated effect, but does not prejudice: a) the acts of execution of infringement decisions become final  that have already been carried out (…)”.

In the decision under examination, the Court of Appeal has specified that art. 77 C.P.I. refers only to the case in which the judgment on infringement has preceded the judgment on the validity of the patent and not the contrary case.

The Supreme Court has further asserted that the contemporary outstanding character of the judgment  having as subject the nullity of a patent implies the need for the suspension of the judgment relative to the infringement of the same, since the judge of the infringement must wait for the decision on the pre-judicial question relative to the validity of the patent, not being able to solve it secondarily in order to avoid a contrast of sentences.

Instead, in case the decision on the infringement has preceded the decision on the validity of the patent, the same shall not have the authority of a sentence become final regarding the validity of the patent. At most, a contrast will occur between the practical effects of the two decisions, solved by art. 77 C.P.I. mentioned above, with the attribution of backdated effectiveness of the nullity sentence and without prejudice for all the executive acts that have already been carried out on the basis of the sentence on the infringement.