Opinions
Winning a PI in Patent Litigation: Are There Different Requirements in Italy and the UPC?
In Italy, in order to grant a PI order for patent infringement, two elements are required: (i) “fumus boni iuris”, i.e., the summary assessment of infringement, after considering the matter of the validity of the patent, if requested by the defendant, and; (ii) “periculum in mora“, i.e., the need for urgency, because the duration of a proceedings on the merits could render the protection ineffective.
Similar criteria are also established for PI proceedings before the UPC, as stated by many decisions.
PI proceedings in Italy.
In order to assess the “fumus boni iuris“, the court needs to analyse the validity of the patent invoked and its infringement: with reference to the validity, Article 121 of the Italian Industrial Property Code sets out the presumption of validity of patents already granted, given that it has already been checked by the examiner and provides that the burden of proof to prove the invalidity lies with the challenger. Therefore, in PI proceedings the defendant usually challenges the validity of the patent.
A court expert is (almost) always appointed to investigate the interference between the allegedly infringing product and the scope of protection of the patent. If requested by the alleged infringing party – i.e. in almost all cases – the court expert will also be in charge of assessing the validity of the patent.
With reference to the urgency (“periculum in mora“), Italian case law is very flexible. In some cases, even if the summary proceedings is initiated long after the infringement is discovered, the urgency still remains, for example, in cases where there have been lengthy negotiations between the parties or when the severity of the infringement has increased over time.
The PI requirements before the Unified Patent Court.
According to the most recent UPC case law, in order to obtain a PI: a) the applicant needs to be entitled to initiate proceedings under Art. 47 UPCA; b) the patent needs to be valid; c) its rights need to be infringed. Additionally, urgency and the balance of interests should be considered when granting a preliminary injunction. As clarified by the UPC case law (UPC-LD Lisbon, 15.10.2024 CFI_317/2024), these requirements are cumulative, and the absence of even one of them causes the dismissal of the application.
For assessing the validity of the patent and its infringement, the UPC Court of Appeal (26.02.2024, CoA_335/2023) stated that a sufficiently certain conviction under Rule 211.2 of the RoP in conjunction with Art. 62(4) UPCA requires that the court considers it at least predominantly likely that the applicant is entitled to initiate proceedings and that the patent is infringed. The court refers to the “more likely than not standard” and shows that the presumption of validity of the patent, generally provided by the law, can be easily overcome in a short time and without the necessary presence of a complex expert opinion. In more than one case, this principle has actually been applied and, despite the general presumption of validity of the patent, by analysing the prior art documents invoked by the defendant, the court deemed that it was more likely that the patent was invalid rather than valid.
With reference to the urgency, UPC case law is not uniform. Some decisions do not indicate a predefined time limit for taking action, while others are more precise and indicate a specific time limit.
According to some decision, the urgency period is to be measured from the date on which the applicant is or should have been aware of the infringement. Whether a delay is unreasonable depends on the circumstances of the individual case. There is no fixed deadline by which the applicant must submit its application for provisional measures (UPC-LD Dusseldorf, 31.10.2024, CFI_368/2024).
Temporal urgency will be lacking where an applicant has been so negligent and hesitant in pursuing its claims that, from an objective point of view, it must be concluded that the infringed party has no interest in the prompt enforcement of its rights and that it is therefore not appropriate to order provisional measures.
Other decisions, however, have set the maximum time limit for initiating action at two months or, in other cases, even one month. When the court intended to set a time limit for action, a two-month period is generally deemed acceptable.
Key takeaways for successful PI proceedings before the UPC.
In Italy and before the UPC, upon request of the defendant, the courts perform a summary assessment of validity and dismisses the application, if it is more likely than not that the patent is invalid.
While in Italy the requirement of urgency is assessed with greater flexibility, before the UPC the time lapse between the discovery of the infringement and the initiation of the summary proceedings is shorter.
This newsletter is for the sole purpose of providing updates and general information and is not intended as legal advice on any particular or specific issue.
For clarifications or information, please contact the authors or your reference professional in the Intellectual Property area at our Firm.
Niccolò Ferretti, Partner
E: n.ferretti@nmlex.it
T.: +39 026575181
Daniele Caponetto, Associate
E: d.caponetto@nmlex.it
T.: +39 026575181
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