The object of the patent is identified by the claims

With the sentence n. 10335 of May 19 th 2016, the Supreme Court ruled in relation to the importance of the claims to define the object of the patent.

The case examined by the Supreme Court saw as opposing parties two companies (X and Y) regarding the validity of the Italian patent and the Italian portion of the European patent of the company X and to the infringement of such patents from the company Y.

In particular, the company Y affirmed that the Italian patent, also protecting the same invention of the European patent even not having equal claims, he had to be declared lapsed to the senses of the Art. 59 of the Industrial Property Code (i.c.p.), for which: “If, for the same invention an Italian patent and a valid European patent in Italy have been granted to the same inventor (…) the Italian patent, in the measure in which it protects the same invention of the European patent, it stops producing its effects”.

The Courts of first and second instance declared the infringement of the patents, above mentioned, from the company Y and they rejected the questions of this last regarding the validity of the same and particularly regarding the revocation of the Italian patent as the two patents in matter didn’t exactly have the same claims and therefore the same object. Therefore, the company Y filed an appeal before the Supreme Court.

The issue that has been set to the judges of legitimacy is that to know if two patents, whose claims are partially different, they can be considered having to object the same invention.

The Supreme Court, in the sentence above mentioned, has negatively answered because “the Art. 52 i.c.p. it expressly establishes that the object of the patent is individualized in relationship to the developed claims”. And therefore “if the advanced claims in relationship to two separate patents are different, the found object of the same is also it different so that some identity doesn’t subsist”.

The Supreme Court has concluded that it is irrelevant that Art. 59 i.p.c. mentions the word “invention” instead of “claims” as varying the object of the invention in relationship to the difference of the claims, it necessarily changes the invention.