Italy jurisdiction report: Application of the doctrine of equivalents in Italy

Article 52 CPI (the Italian Patent Law) rules that the scope of protection of a patent is determined by the claims, and further explains that (i) the description and the drawings may be used for the interpretation of the claims; (ii) the scope of protection should balance a fair protection for the inventor with a reasonable legal certainty for the third parties; and (iii) that for assessing the scope of protection, elements which are equivalent to those recited in the patent claims must be considered.

Indeed, article 52 CPI is aligned to the Protocol on the Interpretation of Article 69 of the European Patent Convention (EPC), which expressly refers to the doctrine of equivalents.

Hence, patent infringement may occur either literally or under the doctrine of equivalents. It is generally acknowledged that “literal infringement” occurs when every limitation recited in a claim is literally reproduced by the allegedly infringing device or process, thus requiring each feature included in the claim to have identical correspondence in the allegedly infringing device or process.

In this context, “infringement under the doctrine of equivalents” is a less strict requirement to be met and expands the coverage of the patent claim.

Two approaches

To assess whether a feature of an allegedly infringing device or process is equivalent to a corresponding feature of the claim, the two main approaches are as follows: