The Italian IP Code (Legislative Decree no. 30 of 10 February 2005) provides that, where an action for invalidity or infringement is filed before a court with reference to a not yet granted/registered IP title (patent, trademark, designs etc.), judgment shall not be issued until the Italian Patent and Trademark Office (UIBM) decides on such grant/registration. For this reason, judges, taking into account the particular circumstances of the case, may stay proceedings one or more times waiting for the outcome of the administrative procedure (Article 120.1).

Although Art. 120.1 only refers to grant/registration procedures before the UIBM, a large part of the case law holds that this provision reflects a general principle that is also applicable to patent applications filed before the European Patent Office (Court of Turin, 3.12.2013; Court of Turin, 6.5.2013; Court of Turin, 16.10.2012; Court of Turin, 28.9.2012; Court of Milan, 23.9.2012; Court of Turin, 7.4.2010; Court of Turin, 3.10.2008).

What is more controversial is whether the above provision also applies where a European patent – after having been granted – has been subject to an opposition procedure before the EPO. 

Some decisions seem to imply that Art.120.1 should also be applied when the European patent is subjected to an opposition procedure and that, consequently, a decision can be issued only when there is certainty about the existence of the title and of its actual scope of protection (Court of Turin, 3.12.2013).

More recently, the Court of Milan also ruled on the above issue with judgment no. 803 of 23 January 2017, wherein it held that there is no general obligation for the judges to wait for the conclusion of the opposition/appeal procedure, but it is up to the Court to discretionarily assess the circumstances of the case, in order to determine whether to stay the proceedings or not.

In the case decided by the Court of Milan, the plaintiff’s patent, being the subject matter of the proceedings, had been granted by the EPO and was subsequently limited by the Opposition Division. The plaintiff appealed the decision before the Board of Appeal of the EPO and the defendant sought a stay of the Milan proceedings on the basis of Art. 120.1.

The Court stated that whilst it is an established principle that Art. 120.1 is applicable to patent applications filed with the EPO, it is up to the discretionary evaluation of the Judge whether to stay the proceedings when the opposition is pending.

In this regard, judges shall carry out a summary evaluation of the grounds of opposition and consider the possibility that the related decision may be relevant for the purpose of the national proceedings.

The Court noted that, according to the case law of the EPO, if a decision is only appealed by the patentee, the Board of Appeal cannot conclude in a sense less favourable to the patentee than that resulting from the appealed decision (prohibition of “reformatio in peius”).

In light of this, the Court observed that the scope of the plaintiff’s patent was maintained in an amended form by the Opposition Division; the Court advisor appointed in the Italian proceedings had already provided his technical opinion on the amended version of the patent; and the Board of Appeal could not further limit this scope of protection or revoke the patent.

Therefore, the Court held that no stay would have been appropriate, as there was no uncertainty with regard to the existence and scope of protection of the patent.

The decision at issue states that there is no general obligation to stay the proceedings once a patent is granted and opposition thereto is pending and identifies a number of factors/circumstances to be assessed in order to determine the appropriateness of a stay of the national proceedings.