What if the Italian patent translation does not match the text of the European patent?

Background

Pursuant to Article 54 of the Italian Intellectual Property Code (“IIPC”), a translation of the European Patent into Italian is mandatory to get the patent protection in Italy. However, it is not always easy to translate the technical terms of a patent from a language to another, and sometimes a bad translation could raise legal issues.

In the present case, the company TEMA - Technologies and Materials S.r.l. (“TEMA”) initiated proceedings against Schluter – System KG (“Schluter”) before the Court of Rome seeking a declaration of non-infringement of the Italian portion of the European patent No. 2004395 (“EP‘395”) owned by Schluter for its de-solarization panel - not yet on the market.

In particular the plaintiff claimed a discrepancy between the text of the opposing European patent and its Italian translation. The incorrect translation regarded the conjunctions “and/or”. Claim 1 of EP‘395 provides “a moisture-resistant and moisture-proof foam core layer”, while the Italian translation provides “a moisture-resistant or moisture-proof foam core layer”.

According to TEMA this discrepancy should lead to a patent invalidity, as this would be a case of added matter pursuant to Article 76 (c) IIPC.
Schluter disputed this conclusion, referring to Article 57, para. 2 IIPC, that reads: “the translation into the Italian language of the documents relating to the application filed or the European patent granted is considered applicable in the territory of the Country, if it confers a protection that is less broad than that conferred by the text drawn up in the language of the procedure of the European Patent Office”.

Therefore, Schluter argued that the patent was not invalid but simply its protection was limited to what has been covered by the translation. During the proceedings Schluter also filed a new and correct translation of its patent.

Decision of the Court of Rome

First of all, the Judges considered Schluter’s reliance on Article 57, para. 2 IIPC to be erroneous. In fact, this Article regards cases in which the Italian translation is less broad than the text of the European patent.

In these proceedings, the use of the “or” conjunction instead of the “and” conjunction made the claim broader than the text of the European patent, making this case quite different. That said, the Judges then had to evaluate the possible invalidity of the patent due to added matter.

Regarding the invalidity of the defendant’s patent, the Judges considered two other Articles of the IIPC.

On one side, Article 76 IIPC, which regulates the necessary correspondence between a patent’s description and is claims: the former expresses the technical content of the invention, the latter limits the patent right of exclusivity. If the claim extends beyond the described subject matter, the patent is invalid pursuant to Article 76 IIPC.

On the other side, the Judges considered Article 57 IIPC, which regulates discrepancies between a European patent and the national translation of that patent.

The Judges decided that the Italian translation does not create rights, but it has primarily an informative function for third parties. According to the Italian case-law, the translation has the formal function of establishing that a European patent has been granted and is also valid in Italy.

In light of the above, the Judges held that a joint reading of Articles 76 and 57 IIPC leads to the conclusion that the invalidity of an Italian part of a European patent is limited only in cases of (i) lack of translation or (ii) mistakes of such gravity as to be compared to a lack of translation.

In any case, they concluded that it is always possible to amend the translation of the patent removing possible mistakes in the translation. However, the amendments must be filed without violating third party’s interests, since third parties may have relied on the imperfect translation.

For all the above reasons, the Judges therefore ascertained that Schluter’s patent as amended was not invalid for reasons related to the translation, since:

1. Schluter amended the patent’s translation so to match the text of the European patent;
2. Schluter amended the patent’s translation during the proceedings and before TEMA began marketing its products. Therefore, the interest of the third party has not been violated.

Why is this decision interesting?

This judgment focuses on the translation issues of the European patent into a national language. The translation of a patent is a delicate matter, and the possible consequences of a bad translation could be very serious.

Firstly, if the translation confers a narrower protection than that conferred by the “original” text of European patent, the Italian translation prevails: this is aimed at protecting third parties that have relied on an imperfect translation that resulted in a limitation of the scope of protection of the patent.

Moreover, if the patent lacks the translation or there are serious mistakes in this translation, the Judge could declare the patent invalid.

In any case, according to this judgment, the patent translation can be amended to avoid the declaration of invalidity provided that such amendments may be filed without violating third party interests.

Authored by Andrea Vantini