3 October 2016Jurisdiction reportsMarco Conti and Valentina Gazzarri

The importance of clarity

The patent concerns a method for cleaning heaters through localised explosions generated through a balloon containing an explosive mixture. According to the reasons for the decision, the independent claims at issue lacked essential features insofar as they failed to specify the type of material that the balloon should be made of to avoid a premature detonation, while the scope of the invention is to ensure that the balloon can withstand high temperature.

This reason for invalidating a patent is noteworthy because it shows that a clarity-related issue may harm an Italian patent, even though clarity is not included in the grounds for patent invalidity set out under article 76 of the Italian Patent Law. Rather, clarity requirements are set out in article 21(4) of the Implementing Regulation of the law.

In this respect, one may wonder whether outside Italy patent clarity qualifies as a means for challenging a granted patent. In Europe, article 138 of the European Patent Convention (EPC) excludes clarity from the grounds for national revocation. Accordingly, under article 100 of the EPC clarity is not a ground of opposition although, under European Patent Office case law (G3/14), clarity can (and should) be checked if amendments carried out during the opposition introduce non-compliance with article 84 of the EPC.

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