A decision of the Bologna Court of Appeal, delivered on 15 December 2025 following referral by Supreme Court, has tackled the sensitive issue of claim amendment during the invalidity proceedings. The matter is of crucial importance in patent litigation strategy, particularly in cases involving complex interactions between the assessment of infringement and the (often narrow) boundaries of patent validity.<\/p>\n\n\n\n
It is well established that the grant of a patent by the Authority \u2014 whether the EPO or the Italian Patent and Trademark Office (UIBM) \u2014 results in the \u201cimmutability\u201d of the scope of protection, precluding any broadening of the claims thereafter.<\/p>\n\n\n\n
It nevertheless happens frequently that, during litigation \u2014 and mostly after the filing of the Technical Expert\u2019s Report Draft \u2014 new prior art comes into spotlight and it might, in principle, deprive the patent of validity. Should the patentee fail to react, the risk that the patent will ultimately be revoked by the Court highly increases.<\/p>\n\n\n\n
Italian law (Article 79 of the Industrial Property Code) provides various remedies enabling the patent owner to avoid such destiny for its patent. The patentee may seek either conversion of the patent \u2014 allowing the transformation of the patent into a utility model with a shorter term of protection \u2014 or amend the claims. Both options may be pursued either by filing a request before the National Patent Office (UIBM) or by submitting an application directly to the Court. Given this legal framework, domestic law gives the patent owner the chance to wait for the final the outcome of the Technical Expertise Final Report before deciding whether and how to proceed. In fact, both conversion and claims amendment may be requested at any stage of the proceedings, notwithstanding the ordinary deadlines. The Supreme Court uphold this position in late 2023, stating that only a bad-faith application shall be considered non-admissible, even if filed more than once and close to the last hearing before decision.<\/p>\n\n\n\n
However, the submission of auxiliary (i.e. conditional) requests is not permitted under Italian law, unlike in other jurisdictions \u2014 including the Unified Patent Court \u2014 and before the European Patent Office.<\/p>\n\n\n\n
Provided that the amended claims stay within the scope of the original application and all validity requirements \u2014 including sufficiency of disclosure \u2014 are met, the patentee is free to amend the patent as it deems appropriate, whether by combining or picking features by each claim, or picking features from the description.<\/p>\n\n\n\n
This does not, however, constrain the Court\u2019s power, when assessing validity, to find patentable subject\u2011matter only in some of the original claims (or portions thereof), irrespective of whether an amendment request has been made.<\/p>\n\n\n\n
The Bologna Court of Appeal addressed this, stating that, in cases of partial invalidity, the Court does not establish a new scope of protection of the patent but merely selects from the original claims those parts that are invalid, leaving untouched the remaining scope of protection which still satisfies the patentability requirements.<\/p>\n\n\n\n
While it is generally accepted that invalidity of the main claim entails the invalidity of dependent claims relying exclusively upon it \u2014 owing to their lack of autonomous technical significance \u2014the Court emphasised that this principle cannot be applied automatically. It is necessary, on a case\u2011by\u2011case basis, to determine whether the combination set out in the dependent claims can express a distinct and autonomous technical teaching beyond the main claim.<\/p>\n","protected":false},"excerpt":{"rendered":"
A decision of the Bologna Court of Appeal, delivered on 15 December 2025 following referral by Supreme Court, has tackled the sensitive issue of claim amendment during the invalidity proceedings. The matter is of crucial importance in patent litigation strategy, particularly in cases involving complex interactions between the assessment of infringement and the (often narrow) […]<\/p>\n","protected":false},"author":3,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"inline_featured_image":false,"footnotes":""},"categories":[170],"tags":[217,216],"class_list":["post-1738","post","type-post","status-publish","format-standard","hentry","category-patents-and-utility-models","tag-limitation","tag-patent"],"acf":[],"_links":{"self":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts\/1738","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/users\/3"}],"replies":[{"embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/comments?post=1738"}],"version-history":[{"count":1,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts\/1738\/revisions"}],"predecessor-version":[{"id":1739,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts\/1738\/revisions\/1739"}],"wp:attachment":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/media?parent=1738"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/categories?post=1738"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/tags?post=1738"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}