Italian legislative decree No. 131/2010 (which entered into force on 2 September 2010), amended the Italian IP Code (Italian legislative decree No. 30/2005, “IPC”).
The reform of the IPC was necessary in order to:
- harmonise the Italian rules with the European Community and international regulations;
- fill gaps existing in the “old” IPC;
- regulate more thoroughly certain important issues (such as biotechnology); and
- implement simpler and more effective procedures.
This brief article is aimed at summarising the main changes in judicial procedure (i.e. Articles 120, 122, 128, 129, 132 of IPC), which are relevant for the protection of the patents in the pharmaceutical field.
Art. 120 IPC: negative declaration action in urgent proceedings
The amended Article 120 IPC (jurisdiction and territorial competence of Italian Courts) allows an interim, and provisional, declaration of non-infringement of an IP right, to be obtained in urgent proceedings.
This could be very useful to help prevent the abuse of IP rights by their owner, which is particularly frequent in civil and, more so, in criminal actions.
It should be noted in this respect that, before the recent reform, the admissibility of the negative declaration in interim proceedings was much debated in literature and case-law and, thus, hardly used in practice.
Art. 122 IPC: about the inventor
Article 122(4) IPC was amended with the effect that the inventor is no longer a necessary party in the proceeding for the invalidity of a patent right.
It is now enough to start the action against the owner of the IP right without summoning the inventor cited in the patent.
The reform should achieve a significant reduction in the length and the cost of proceedings (which, before the reform, could be delayed by the need to serve the writ of summons on the inventor/inventors).
Art. 128 IPC: preliminary technical advice
An interesting change was introduced by the amendment of Article 128 IPC, according to which, now: “applications for preliminary technical advice according to article 696-bis of the Italian Code of Civil Procedure, are filed before the President of the IP Specialised Division of the Court which is competent for the proceeding on the merits, in compliance with the provisions of the same article 696-bis, as applicable”.
This amendment introduces the possibility of requesting the IP Specialised Division of the Courts to order a preliminary technical advice (i.e Court Expert opinion) to verify whether a patent has the validity requirements provided by the law and/or if a possible product/process interferes with the scope of its protection. The aim is to have immediately, avoiding all the formalities and delay caused by proceedings on the merits of the case, a technical opinion from (an expert appointed by) the Court, which might help the parties to settle a potential dispute or, in any case, to have some “official” evidence and findings, which could be used in the following patent revocation or infringement proceeding.
Art. 129 of IPC: “descrizione” (i.e. judicial search or saisie) and seizure
Article 129 IPC regulates the so-called “descrizione”, and the seizure. These measures are now regulated in the same single provision and may now be applied for before the same Judge, separately or jointly, in the alternative (the seizure, after the “descrizione”).
The reform has extended the opportunity to obtain “descrizione” and seizure “ex parte” (i.e. without previous notice to the other party), providing that this procedure should be followed in all “cases of particular urgency, and especially where any delays could cause irreparable harm to the rights holder or when the convening of the other party could jeopardise the implementation of the order of descrizione or seizure”.
Art. 132 IPC: technical advice
Article 132(5) IPC has been amended so that it now provides that the Judge could admit, within all the preliminary injunction proceedings, a technical opinion in order to acquire brief technical information. This in practice was already applied by almost all the IP Courts in Italy but now there is no doubt that Court Technical Expert phase can be ordered in urgent proceedings.
In conclusion, the above briefly mentioned amendments introduce new and interesting tools for the IP rights owners aimed at obtaining a quicker and more effective protection than the one provided by the “old” rules.
 As a matter of fact, article 120 of the IPC was amended with the addition of the following paragraph: “6-bis. The rules of jurisdiction and competence under this article [i.e. the rules the rules of jurisdiction and territorial jurisdiction applicable to IP proceedings] shall apply to any action of negative declaration also proposed in urgency proceedings”.