- Knowledge
Detailed Explanation of the Italian Patent Invalidation System: Legal Framework, Dual track Procedure, and European Synergy Strategy
As an important innovation economy in Europe, Italy's patent invalidation system combines the traditional civil law system of the continental legal system with the rules of EU integration. Unlike England and France,Italy adopts a dual track invalidation procedure of judiciary and administration,And due to the strong technological attributes of industries such as medicine and machinery, it has formed distinct characteristics in cases of invalid biosimilar drugs and industrial design patents. This article systematically analyzes the operational logic and practical points of the Italian patent invalidation system.
PART .01
Legal Basis:Legal reasons for patent invalidity (Italian Industrial Property Code CPI, Art. 76)
PART .02
Dual track path for invalid programs
Applicable to:Only applicable to Italian domestic patents (non European patents).
Program features:
Low cost and efficient: The cost is approximately 5000-15000 euros, with an average duration of 6-12 months.
Written review: Both parties submit written statements and evidence, without oral arguments.
Validity of the ruling: UIBM may declare the patent invalid in whole or in part, and the ruling result shall be published in the official gazette.
Legal Basis:CPI Art. 119 ter (newly added in 2019, providing a fast track alternative to judicial litigation).
1. Jurisdiction Court:
First instance: The specialized intellectual property courts in Milan, Turin, and Venice (Tribunali Specializzati per la Propriet à Industriale e Intellectale).
Second instance: Court of Appeal of Milan, Rome, Naples (Corte d'Appello).
Final appeal: The Supreme Court of Italy (Corte di Cassazione).
2. Core process:
3. Key features:
Compulsory intervention of technical experts: The court designates an independent technical expert (CTU) to issue a neutral report (which takes 3-6 months).
Average duration: First instance trial takes 18-30 months, with an additional 12-24 months for appeal.
Cost: Complex cases can reach up to 200000 to 500000 euros.
PART .03
Connection with the European Patent System
EPO opposition procedure: Challenge a European patent within a 9-month opposition period, and if successful, Italy will automatically invalidate it.
National procedure: After the objection period expires, invalidation must be filed through Italian courts or UIBM (only applicable to Italian domestic patents).
Italy has not yet approved UPCA and is not currently participating in the UPC system. The invalidity of European patents in Italy still relies on national procedures.
If it joins in the future, the UPC ruling will directly apply to Italy.
PART .04
Rules of Evidence and Burden of Proof
Burden of proof:To be borne by the invalid requester (CPI Art. 2697).
Evidence type:
Evidence preservation:You can apply for "Descrizione" to fix infringement or existing technical evidence.
PART .05
Ineffective consequences and relief mechanisms
Traceability:After the invalidation judgment takes effect, the patent shall be deemed non-existent from the beginning (CPI Art. 76 (4)).
Partially invalid:The court/UIB may only revoke partial claims.
Reverse compensation for damages:If a temporary injunction has been enforced before the patent becomes invalid, the right holder shall compensate the defendant for the losses.
Cross border effectiveness:The UIBM ruling only affects Italian territory; Judicial judgments can be enforced in member states through the EU Brussels Regulation.
PART .06
Practical Strategies and Industry Characteristics
Low cost quick decision:For patents with low stability, priority should be given to using UIBM administrative procedures (with costs only 1/5 of litigation).
Complex cases:In fields such as medicine and communication technology that rely on technical appraisal, it is advisable to go through judicial procedures.
Supplementary Protection Certificate (SPC) linkage:Invalidation of basic patents will result in automatic invalidation of SPC (Case C-482/07, AHP Manufacturing v. BIE).
Bolar exception defense:Generic drug companies may conduct invalid experiments for marketing authorization during the patent period (CPI Art. 68 (1) (b)).
Utilize review archives: Obtain retrieval reports from EPO/Italian examiners to locate existing technical defects.
Reverse engineering report: Regarding mechanical patents, the lack of creativity was demonstrated by dismantling competitors.
