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No more “central definition theory”? Supreme Court rules on counterfeiting by equivalents

Published in: Intellectual Property
by Margherita Manca
Home > No more “central definition theory”? Supreme Court rules on counterfeiting by equivalents

The Italian Supreme Court, in Order No. 120 of Jan. 4, 2022, overcomes the outdated approach referred to as “central definition theory,” giving a spotlight to claims.

In this article:

The case: patent infringement

In the case at hand, the company Alfa Spa, owner of a European patent, validated in Italy, claimed that the company Beta Spa had infringed this patent by offering for sale equipment adopting solutions that interfered with Alfa Spa’s patent title.

However, the lower courts found the plaintiff’s claims to be unfounded, arguing that the features claimed within the cited patent were not reproduced in the challenged installations. As a matter of fact, Alfa Spa’s invention deserves protection within the limits of the claimed features, as it is not sufficient that Beta Spa’s machinery reproduces the essential core of the patent, since one of the claims of the patent would be entirely absent.

Before proceeding with the analysis of the Supreme Court’s order, let us see what the legislation says about infringement by equivalents.

The doctrine of equivalents: article 52 of the Industrial Property Code.

Article 52 of the ICC, as amended by Legislative Decree 131/2010, provides:

  • in Paragraph 1, that what is intended to be indicated as the subject matter of the patent must be specifically stated in the claims;
  • in Paragraphs 2 and 3 that the limits of protection are determined within the claims and that the description and drawings serve the function of interpreting the claims while ensuring fair protection to the owner of the invention and reasonable legal certainty to third parties.

Paragraph 3a, introduced by the aforementioned 2010 decree, introduces regulatory recognition to infringement by equivalents (long recognized by case law and doctrine). This paragraph specifies, in fact, that “In determining the scope of protection conferred by the patent, due account shall be taken of any element equivalent to an element specified in the claims” (a rule consistent with the Protocol interpreting Article 69 of the European Patent Convention).

In more detail, the doctrine of equivalents grants the patentee broader protection than would be afforded on the basis of a strictly literal interpretation of the patent, preventing modest and insignificant variations from circumventing the protection conferred by the patent.

Overcoming the "central definition theory"

Within the order, the Supreme Court points out that in the provision of Article 52 IPC, the overcoming of the outdated “central definition theory” approach, which was based on the evaluation of the invention as a whole, is captured.

This mode of reconstruction had faced much criticism as it did not take into account the role of the claims, placing third parties in a situation of uncertainty as to the extent of patent protection conferred by the design right.

This strengthened the central and autonomous role of the claims in both the assessment of patentability requirements and the stage of establishing literal or equivalent infringement.

The criteria for assessing equivalence

Within the order, the Supreme Court reports two methodologies for assessing equivalence:

  • the “triple test,” according to which infringement by equivalents includes only those solutions that achieve the same result as the invention, in the same manner, and perform substantially the same function;
  • the obviousness criterion, according to which infringement by equivalents includes all achievements that, considering the so-called known art, constitute an obvious and trivial variant for the expert in the field.

The Supreme Court tends to favor the second of the above two methods.

The decision of the Supreme Court

The Supreme Court, however, rejected the appeal brought by Alfa Spa company. In the opinion of the Supreme Court, in the case at hand, the machines of the company Beta Spa do not represent a trivial and obvious innovation of the devices patented by Alfa Spa (absence of interference).

Further, the Court enunciates the following principle of law: “On the subject of patents for industrial inventions and their equivalent infringement, pursuant to Article 52, paragraph 3 bis, of the Industrial Property Code, as per Legislative Decree No. 30 of 2005, as amended by Legislative Decree 131 of Aug. 13, 2010, the judge – called upon to assess the existence of an infringing tort – must first determine the scope of protection conferred by the patent, then analytically identify the individual features of the invention, as expressly claimed in the patent text, interpreted also on the basis of their description and the accompanying drawings, and then verify whether each element so claimed is also found in the product accused of infringement, even if only by equivalents, thus meaning, according to one of the possible methodologies that can be used, those variants of the invention that can perform the same function as the elements proper to the patented product, following substantially the same path as the inventor and achieving the same result.”

Order No. 120/2022 thus overcomes the “central definition theory,” and this overcoming would also seem to be confirmed by the most recent order of the Supreme Court, No. 30943 of October 20, 2022, where the Court found infringement by equivalents of a patent because the differences in the later invention were obvious and trivial. As a matter of fact, the Court held that “in order to assess whether the contested embodiment can be considered equivalent to the patented one, so as to constitute an infringement thereof, it is necessary to ascertain whether, in allowing the same final result to be achieved, it presents the character of originality, offering an answer that is neither trivial nor repetitive of the previous one, being to be qualified as such that which exceeds the skills of the average technician faced with the same problem, it being possible to consider in this case only that the solution lies outside the idea of a protected solution.”

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Publication date: 10 November 2022
Last update: 5 January 2023

Margherita Manca

Laureata presso l'Università Luigi Bocconi di Milano, appassionata di Proprietà Intellettuale.
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