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Meda Pharma GmbH & Co. KG v. Alfa Wassermann spa, Giellepi Chemicals srl, Milan court of appeal, Italy, 10 July 2014 – 16 October 2014

This judgment has confirmed the one rendered in the first instance, dated 23 September 2010 – 17 December 2010,  which may be read here.

Apart from procedural issues, this judgment has two points of interest.

– Validity of a disclaimer - The court of appeal has confirmed that a disclaimer can be regarded as valid when it satisfies the conditions defined by the EPO.  The grounds are substatially the same stated in the first-instance judgment, to which reference is made without any significant argument being added (pages 15, 16). 

– Infringement prior to a disclaimer – It was substantially unquestioned that the activity at issue had been discontinued shortly after the beginning of the dispute in December 2006. One of the debated points was whether there had been infringement before that. The appellees argued that no infringement could be imagined. One reason was that the disclaimer had not even been proposed at that time, so that the patent claims were still in their original and invalid form. A further reason was that the indications of use with which the product was sold did not not even fall within the claims as limited; in other words, there would have been no infringement even if the claims had already been limited at that time.


In the view of the court of appeal, the former reason was decisive so that the latter did not even need to be discussed. The court’s reasoning was that “infringement in principle implies the vallidity of the allegedly infringed patent; there cannot be infringement of a void patent because this can neither produce any effect nor confer any right. In this case, the disclaimer was proposed and applied only in the course of the proceeding …. so that it must be concluded that no infringement took place either after 31 December 2006 …. or until then” (page 14).

Read the judgment (in Italian) here.

Head note: Sandro Hassan, Studio Legale SIB