Italian courts and torpedo actions in a recent Genoa decision

BREAKING: may not be
the only Thorpedo

This Kat is so familiar with patent law and related procedural issues that for a very long time, when hearing of torpedos, the only possible connection coming to her mind was that with legendary Australian swimmer Ian Thorpe, aka as the Thorpedo. 

When she found out that there was no need to think as far as Australia and that torpedos - like many other things - are also very Italian, she was shocked and relieved at the same time. 

Anyhow, Katfriend Evelina Marchesoni (Bird&Bird) rescued her and produced this engaging update on recent developments in Italian case law on torpedo actions.

Here's what Evelina says:

"The Tribunal di Genova (Genoa District Court) has recently issued an interesting decision on the so-called Italian torpedo actions, these being proceedings filed before Italian courts for a declaration of non-infringement ("DNI") in respect of, not only of the Italian designation, but also the foreign designations of a European patent.

Essentially, by filing torpedo proceedings the alleged infringer takes advantage of the usual slowness of Italian proceedings on the merits. This is because, as long as the Italian court is seized to ascertain the non-infringement of the foreign designations of a European patent and/or the foreign national patents, foreign courts (this is particularly the case of German courts) could decide to stay the infringement proceedings successively filed by the patent holder.

Italian courts have been generally inclined to deny their jurisdiction on the foreign designations of a European patent or foreign national patents, in particular where the alleged infringer contends, either by claim or defence, that the foreign exclusive rights are invalid.

Evelina Marchesoni

As a matter of fact, in these cases Italian court have consistently stated that claims for DNIs of foreign designations could not be heard in Italy, in compliance with Article 22(4) of Regulation (EC) No 44/2001 (BrusselsI), as interpreted also by the Court of Justice of the European Union (CJEU) in Case C-4/03 GAT v LUK. 

In relation to the corresponding provision (Article 16(4)) in the Brussels Convention of 27 September 1968, the CJEU held that this "is to be interpreted as meaning that the rule of exclusive jurisdiction laid down therein concerns all proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection". 

It is interesting to note that the same interpretation was provided with regard to Article 24(4) of Regulation (EU) No 125/2012: regardless of the domicile of the parties, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place have the exclusive jurisdiction to hear “proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence".

However, in a 2013 decision, the Corte di Cassazione (Italian Supreme Court) held that in DNI proceedings Italian courts have jurisdiction not only over the Italian designation, but also the foreign designations of a European patent, being Italy “the place where the harmful event may occur, also in respect of the German designation of the European Patent", pursuant to Article 5(3) Brussels I.  

The Corte di Cassazione relied on CJEU decision in Case C-133/11 Folien Fisher v Ritrama (a case concerning unfair competition, not patent infringement) in which it was held that "paragraph (3) of Article 5 of Regulation No. 44/2001 must be interpreted as meaning that an action for a negative declaration seeking to establish the absence of liability in tort, delict, or quasi-delict falls within the scope of that provision".

The Katpedo is already swimming
in the lane next to yours.
And he's pretty competitive.

Overall, this decision of the Corte di Cassazione could have re-opened the door to torpedo actions in Italy.

Nevertheless the Court of Genoa seems now to have clarified the actual breadth of this Corte di Cassazione decision, which was exclusively grounded on Article 5(3) Brussels I. It did so also by taking into consideration Article 22(4) Brussels I.

In the case decided by the Genoa District Court, an Italian and two German companies sued an Italian, a German and a Swiss company, requesting the Court of Genoa, inter alia, to issue a DNI with respect to all (Italian and foreign) designations of a European patent, a German national patent and even a German utility model. They claimed that Italian courts were competent to hear those claims, in compliance with Article 5(3) Brussels I.

The defendants challenged the jurisdiction of the Genoa court over the foreign designations of the European patent as well as of the German patent and utility model, pursuant to Article 22(4) Brussels I, pointing out that the plaintiffs contended the invalidity of the foreign exclusive rights, even if by way of a plea in objection.

Merpel with her daily portion
of Brussels I sprouts

The Tribunale di Genova found that, since the plaintiffs were objecting the validity of the German patents, Article 22(4) Brussels I was to be applied to this case. This led the Court to declare that it lacked jurisdiction with respect to the non-Italian designations of the European patent, the German patent and the German utility model.

With reference to Article 5(3) Brussels I, the Court clarified that this "may concern the different cases of negative declaration actions aimed at establishing the absence of liability of tort but only when the alleged tort does not regard issues related to the validity of the patents and when this is not contested by the parties, as is the case of infringement action sin which the validity of the patent allegedly infringed is not objected."

All this is compliant with the GAT and Folien decisions and the Corte di Cassazione ruling, as well the UK decision in Joined cases Actavis Group hf v Eli Lilly & Company (USA) and Medis ehf v Eli Lilly & Company (USA) [here]. Here Arnold J stated that proceedings requesting a DNI in relation to both a UK and foreign designations of a European patent could be brought before English courts also considering that the plaintiffs undertook not to challenge validity of the patent at issue.

According to the Court of Genoa, Italian (and more at large: European) courts may hear DNI claims only when the issue of validity of the patent is not raised by way of an action or as a defence. What remains uncertain, however, is whether the questions of validity are required to be taken into consideration when determining the scope of the claims in order to assess the infringement …”