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Intermarine S.p.A. (formerly Rodriquez Cantieri Navali S.p.A.) v. CMC Marine S.r.l.. Court of Appeal of Turin, Italy, 22 June 2017, Judgement no. 106/2016

With its writ of summons in the first instance proceedings, Intermarine demanded the Court of Turin a declaration of invalidity of a utility model owned by CMC.

Said utility model related to an automatic stabilizing system for boats with an electrical fin, which was also the subject of a European patent application (whose protection was not extended to Italy).

The utility model was granted in furtherance of a request for conversion from an Italian patent application. Indeed, Section 76, paragraph 3 of the Italian Industrial Property code provides that “an invalid patent may produce the effects of a different patent of which it embodies the requirements of validity, and that would have been chosen, had the applicant be aware of the invalidity. The application for conversion may be filed in any instance of a judicial proceedings. The judgement which ascertains the validity requirements of the different patent can order the conversion of the invalid patent […]”

CMC cross-claimed:
(i) a declaration that the utility model had in fact the validity requirements to be further converted into a patent for invention;
(ii) the assessment of the incorrect qualification of the invention and its conversion into an Italian patent registration.

1. The judgement of first instance – the conversion of the utility model
The Judge held that the utility model could not be converted in a patent for invention that the applicant would have filed, had he known its invalidity.

Indeed, while the Court deemed present the subjective requirement (CMC would have wanted to obtain a patent, had it known of the invalidity of the utility model), it excluded the objective requirement.

As resulted from the performance of a technical expertise and the assessment of the Judge, the invention lacked the requirement of novelty, since it was previously disclosed for promotional purposes (without any confidentiality obligation) by a third party who autonomously developed the same invention to – among the others – scientific researchers and members of the academic community.

Thus, the Court of Turin declared the invalidity of the utility model, and rejected the cross-claim of the defendant.

2. The ruling of the Court of Appeal – the lack of the subjective requirement
The Court of Appeal in the subsequent appeal proceedings rejected the motion filed by CMC, but on partly different grounds from those of the judgement of first instance.

In weighing the legitimacy of the request for conversion of the utility model, the panel of judges agreed that (pursuant to Section 76 of Italian Industrial Property Code) such conversion requires that:

(a) the utility model be provided with the validity requirements of a different patent (objective requirement);

(b) the owner would have wanted to obtain a patent, had he/she known that the utility model was invalid.

The purpose of the rule is to avoid a severe punishment of the applicant as a result of his/her incorrect assessment at the time of the filing. Thus, its applications shall be independent from the inner convictions of the applicant regarding the exact qualification of the invention.

The Court of Appeal held that the subjective requirement for the conversion was not met, and therefore did not even took into exam the related objective requirement.

Firstly, the panel noted that the utility model by CMC was the result of a prior conversion from a patent. Thus, allowing a further conversion (back from a utility model to a patent for invention) would mean distorting the nature and the purpose of the rule.

Secondly, the Court deemed that the request for conversion from a utility model into a patent was not at all the result of a wrong qualification of the invention by CMC. It was instead the exact and precise will of the applicant: indeed, CMC’s corresponding patent application received several objections from the EPO examiner, and the defendant wanted to avoid the unpleasant surprise of receiving the same objections to its Italian patent application. As a matter of fact, in Italy the patent office does not conduct any substantive examination on the validity requirements of a utility model application.

Thus, the intention that moved CMC to request the conversion was exactly the opposite of obtaining a patent for invention. CMC wanted to obtain a IP right different from the patent for invention that it already filed for, and that ran the risk of being subject to the same objections as the corresponding European patent application.
In light of the above, the Court held that it could not be inferred that, had CMC known the invalidity of the utility model, it would have wanted a patent for invention.

Therefore, the request of conversion was rejected for lack of the subjective requirement without the Court of Appeal having to assess the objective requirement.

The decision if significant, because the matter of the subjective requirement for the conversion has been very rarely addressed by case law, even if it was debated by scholars. Moreover, the request of conversion from a patent for invention into a utility model is an extremely rare event.

A copy of the judgment (in Italian) can be read here.

Headnote and summary: Luca Giove, Studio Legale Giove