Year in Review: notable 2020 patent cases in Italy

Infringement by equivalence – Proras v Ades (Supreme Court)

The Supreme Court held that prosecution history estoppel has no legal basis in the Italian patent law system. The assessment of patent infringement must be carried out by taking into consideration the objective meaning of the patent as expressed in the claims, interpreted in light of the description and drawings, but without giving relevance to the subjective intent of the patent owner.

Moreover, the Supreme Court stressed that the differences between the contested product and the features provided by the patent claim do not exclude infringement by equivalence when:

• modest modifications affect a claimed element that has no central importance in the inventive idea (eliminating the element or replacing it by a different expressive solution of the same basic idea); or
• the product accused of infringement by equivalence performs the same function as the patented product, substantially following the same way and reaching the same result (this approach recalls the triple identity test); or
• the different solution adopted by the infringer in place of the patented solution appears obvious to a person with average knowledge of the technical field.

Prior disclosure, contributory infringement and damages – Cama 1 v I.M.A./Gima (Court of Appeal of Milan)

The Court of Appeal held that in order for the invention to lack the novelty requirement as a result of prior disclosure, it is necessary that the invention is known, before the patent application is filed, by a potentially indefinite number of people who are able to understand the characteristic features of the invention and who are not obliged to keep it secret. In this case, the court confirmed that there was no prior disclosure since the machineswere not accessible to third parties and the people who inspected them were bound by confidentiality obligations.

The judges confirmed that the defendant committed contributory…