Italian Supreme Court Holds that Rights ‘On Patents’ and ‘To Patents’ are Different Legal Concepts

By Sergio Carluccio
December 18, 2019

“If an inventor was never the owner of a patent, but assigned to a third party the right to file it, he has rights ‘to’ but not ‘on’ the patent, and his or her participation in an invalidation trial is not mandatory.” – Italian Supreme Court judgment

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Italian Supreme Court in Rome.

TPA IMPEX Spa is the owner of European parent n.567044, validated in Italy, regarding a cleaning device for household work. TPA sued DAVY Srl and SIEL srl in the first instance, accusing them of having infringed the Italian portion of the European patent. The defendants answered and counter-claimed for nullification of the the Italian portion of the European patent.

The court of first instance upheld the counter-claim of the defendants, declaring the Italian fraction of the European patent invalid with reference to most of the claims. It concluded that the defendant was entitled to manufacture and sell its cleaning devices.

TPA IMPEX appealed. It asked in part that the judgment should be declared void because the inventor was not involved in the proceedings, thus violating Article 102 of the Italian Civil Procedure Code.

Court of Appeal Says Inventor Should Participate

The Court of Appeal upheld the appeal brought by TPA IMPEX, and stated that the trial should be repeated, with the inventor called to be a party in it. The Court of Appeal recalled the principle of the “necessary joint consortium” in an action for nullity of a patent. All the “subjects having rights on the patent” should participate in the trial, including the inventor and, if any, the “previous owners of the patent, then sold to others.” The latter should be protected too, considering the retroactive effects of the ruling.

DAVY Srl filed a recourse with the Supreme Court of Cassation against the decision of the Court of Appeal, complaining about the violation of Art. 102 of the Civil Procedure Code and of Art. 122, paragraph 4, of the Industrial Property Code as amended in 2010. DAVY claimed that the Court of Appeal erroneously considered that the nullity of a patent should be discussed within a trial involving all the “subjects having rights to the patent”, including the inventor, if different from the patentee, while instead, the new Art. 122 of the Industrial Property Code specifies that those “having rights on the patent as owners of it” should participate in an invalidation trial. DAVY Srl claimed that the Court of Appeal confused two different concepts—”having rights on the patent” and “having rights to the patent.” The inventor may have rights to the patent, but not on the patent.

Enter the Supreme Court of Cassation

The Court of Cassation upheld the appeal by DAVY Srl. It basically accepted that having rights “on” and “to” a patent are different legal concepts and concluded that it was not mandatory that the inventor should participate in the trial. The conclusion would have been different if the inventor had been the owner of the patent and had then sold it to TPA IMPEX Spa. In this case, however the inventor was never the owner of the patrimonial rights on the patent, since he had assigned the right to register it to TPA IMPEX Spa.

The Court of Cassation based its decision (5963-19 of 28-02-2019) on the fact that the new version of  Art 122 of the Industrial Property Code, as amended in 2010, adds the words “… as owners of it” to the old version of the same Art. 122, which stated “A legal action for nullity against an industrial property right should be exerted in an adversarial proceeding involving all persons who are noted in the patent register as having rights …”.

The Role of the Inventor Defined

The Supreme Court of Cassation thus confirmed that the inventor is a necessary party to a patent invalidation trial, which cannot be held without his or her participation, only if the inventor was the original owner of the patent—even if it was later transferred to a third party. If, on the contrary, the inventor transferred to a third party the right to file the patent application, then his or her participation in an invalidation trial is not necessary. In the latter case, the inventor had a right to the patent, but not on the patent.

Image Source: Deposit Photos
Photography ID: 228060532
Copyright: brendan_howard 

The Author

Sergio Carluccio

Sergio Carluccio has an extensive practice at Jacobacci & Partners drafting and prosecuting European and Italian patent applications relating to a broad range of engineering subject-matter in the fields of mechanics and electronics, such as industrial automation and robotics. He is often involved in the coordination of international prosecution of patent applications, with particular reference to USA, China and Japan. He is also experienced in prior art document searches and in freedom-to operate and infringement analysis and opinion-writing. He also has experience in industrial design applications and in providing tailored strategic and practical advice on all IP related needs.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 3 Comments comments. Join the discussion.

  1. Anon December 18, 2019 9:19 am

    I am curious if there is a US analog that would (should) call for participation — or perhaps at least the option — of ALL owners in the chain of ownership of the property known as a patent in ANY proceeding that seeks to ‘nullify’ the very existence of that property (that is, to make it so as if the property never existed to begin with [thinking specifically of IPRs]).

  2. angry dude December 19, 2019 10:25 pm

    Anon@1

    Years ago I attended multiple IEEE conferences and talked to many PhD folks from places like IBM Research or Microsoft Research etc
    Quite a few of them told me straight face that their own patents are junk and they were forced to file those patent applications by their management

    Do you really want those folks to participate in IPR proceedings ?

    I do 🙂

  3. Anon December 20, 2019 7:48 am

    I do as well – perhaps for different reasonings.

    My point here is that for all of the attempted “denigrating” of a patent right “that never was” (that is, the IPR logic that it is ok to take property because that property never “really” existed in the first place), one does invoke the interests of any and all parties that may have held title OF that “property” all the way back to its now challenged origination.

    Far too many forget WHY we as individuals have allowed ourselves to be put under the mantel of government (of any kind). The US system (in particular) is present for the protection of the life, liberty, and property of the individual (and only secondarily through then to the legal fiction of the “individual” of juristic persons).

    Some see “State” as the be all and end all and simply stop thinking when a case like Oil States holds that the State has a certain power.

    When those who are attorneys hold such shallow understanding of WHY we allow governmental power in the first place, there is a real danger of a type of corruption that is more pernicious than raw naked aggression.

    You run the risk of emasculation of the individual for either the power of the State – or even the power of juristic persons that themselves wield power over the State. And you do so in a “slow boil” manner. By that I mean to invoke the adage of how to boil a frog alive.

    Throw a frog into a beaker of already boiling water and the frog will immediately jump out and stay alive. Put the frog into a beaker of room temperature water, and then put that water to a slow boil, and the frog will not jump out, and will allow itself to be boiled alive.

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