Italy jurisdiction report: Doctrine of equivalents and amendments


Marco Conti

Italy jurisdiction report: Doctrine of equivalents and amendments

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In Decision N. 54470/2016 (September 10, 2017), the Milan Court ruled that if a patent is subject to substantive amendments, that is, amendments introducing new features which are based on the description, the doctrine of equivalents should not apply to those features. This decision appears to be consistent with the practice of the courts in the US.

Similar decisions have been taken in Germany and the UK, but they have been reversed by the respective Supreme Courts, with decisions X ZR 29/15 (June 14, 2016) and UKSC 48 (July 12, 2017), respectively.

A patent system must ensure a fair balance between the right of the inventor to enforce its patent rights and the need to secure legal certainty to the third parties. This concept is established in article 52 of the Industrial Property Code (CPI) and has corresponding provisions in the patent law of other countries.

In this context, the application of the doctrine of equivalents is an important advantage for the patentee. When assessing whether this advantage is unfair or inappropriate in cases of substantial amendments, one should consider those other factors that deeply impact the legal certainty for third parties: (i) the prohibition to broaden the scope of protection with a post-grant amendment, ruled, eg, by article 76(1)(c) CPI and article 123(3) EPC; and (ii) the prohibition to add fresh subject matter in any amendment with respect to the content of the application as filed, ruled eg, by article 76(1)(c) CPI and article 123(2) EPC.

Jurisdiction report, doctrine of equivalents, Marco Conti, Bugnion, patent amendments, patent description, Milan Court, post-grant amendment, prior art