“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

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