The aim of these articles is to keep our Clients and Associates updated about developments in the sector of Intellectual Property in general and our firm in particular. In this way, we wish to provide a broader view of the tools that the field of trade marks, domain names, patents, designs and related rights offers to entrepreneurs to enhance and protect their efforts in researching and developing new solutions and ideas.
Transforming a European Patent into a Utility Model Application in Italy: A Sometimes Neglected but Useful Possibility
Article 58(2) of the Italian IP Code provides for the possibility for European patent applications that have been rejected, withdrawn or deemed to be withdrawn or revoked European patents to be transformed into corresponding Italian utility model applications before the Italian Patent and Trademark Office.
This is an option not to be overlooked, as it allows owners of European applications and patents to safeguard their industrial property rights in Italy even in the event of difficulties in the European patent process.
On this topic, we draw your attention to the recent judgement No. 31995 of 11/12/2024 by the Italian Court of Cassation, which was originally called upon to rule on the legitimacy of an appeal judgment concerning the validity and infringement of a European patent validated in Italy.
In the course of the proceedings, however, the European patent was revoked by the European Patent Office and converted into a utility model in Italy.
In view of this change in the legal context, the Court ruled that the validity and infringement of the utility model did not form part of the subject matter of the pending proceedings, but had to be assessed in separate proceedings, and therefore repealed the appeal judgement without remand to the Court of Appeal.
This ruling represents an important case law precedent, with possible consequences on industrial property protection strategies in Italy and Europe.