Italy: Conflict Between IP Courts Of Milan And Rome: "Torpedo Action" Is Back (Maybe)

Last Updated: 27 March 2018
Article by Aurelio Assenza

The deprecated slowness of the Italian Courts has caused the phenomenon of the so-called "Italian Torpedo Actions"1, in litigation having as object non-Italian patents.

To sum up: Torpedo Action usually amounts to non-infringement proceeding of a foreign patent brought before an Italian Court against a person not domiciled in Italy.

The jurisdiction of the Italian Court would be justified by applying art. 7 (2) of Reg. EU 1215/2012, that provides that "A person domiciled in a Member State may be sued in another Member State [...] in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur".

The action triggered by the "non-infringer" before the Italian Court prevents – due to lis pendens reasons – the patent owner to sue the non-infringer in another Member State.

In another words, due to the commonly known slowness of the Italian Courts, the "non-infringement" proceeding is brought by the "non-infringer" in Italy just to avoid an infringement proceeding in another Member State where the Courts are faster.

The above is a brief preamble about "Torpedo Action". Now let's have a look to the conflict of February 2018 between IP Courts of Milan and Rome.

However, it is necessary to go back to 10 June 2013 and namely to the decision no. 14508/2013 of the United Sections of the Italian Supreme Court.

The Supreme Court, with a sharp revirement, held that Italian Court may amount to the judge of "the place" where the infringement (i.e. the harmful event) "may occur" even with respect to the German portion of a European patent.

The decision lacks of any well-reasoned explanation and I do not agree with it2. In any event the Supreme Court refers to the decision C-133/12 (Folien Fischer) of the Court of Justice of the European Union stating that a request for a declaration of no liability in tort is a matter "relating to tort" pursuant to article 5, paragraph 3, of EC Regulation 44/2001 (now replaced by art. 7, para. 2, EU 1215/2012).

No arguments are pointed out to overcome the principle of the limited enforceability of any patent in a specific territory, according to which, an Italian patent is valid in Italy only and, on the other hand, a German patent and a French portion of a European Patent are valid, respectively, in Germany and in France only.

Thus, according to the decision of the Supreme Court, "Torpedo Actions" can be triggered before Italian Courts even if the subject matter of the proceeding is not a patent granted in Italy.

Now let's talk about the "Torpedo Action" conflict Milan-Rome.

After the Supreme Court revirement of 2013, the IP Court of Milan issued two decisions concerning "Torpedo Action": the decision no. 1143 of 27 January 2014 and the decision no. 13625 of 14 December 2016.

With the decisions mentioned above, the IP Court of Milan has not followed the decision of the Supreme Court of 2013 and it declined the its jurisdiction for non-infringement claims concerning Spanish portions of European Patents (the decision of 2014) and the German portion of a European Patent (the decision of 2016).

Namely, the IP Court of Milan declined the jurisdiction of the Italian Court in the light of the "territoriality principle" for the validity/enforceability of any patents, pointing out that "A claim seeking a non-infringement declaration of a patent requires that such patent is valid and enforceable, within the territory in which it was granted. Out of such perimeter, it is not possible to assess any infringement or non-infringement and thus even a "harmful event" should be excluded, which would be the link to confirm the jurisdiction".

The "Torpedo Action" has been banned from Milan.

On the other hand, it seems that "Torpedo Action" might root in Rome.

As a matter of fact, on 5 February 2018 IP Court of Rome issued the decision no. 2608/2015. The IP Court of Rome dropped the case and, even if it did not evaluate the opportunity to preliminarily assess the validity/enforceability of the patent in Italy, applied article 5 of Reg. EC 44/2001 as interpreted by the Supreme Court in 2013 and in the Folien Fischer case by the CJUE and affirmed the jurisdiction of the Italian courts "even with respect to French, German, Austrian and UK portions" of a European Patent.

The conflict between the decision of the Supreme Court and the recent decision of the IP Court of Rome, on one hand, and the two decisions of the IP Court of Milan, on the other hand, is clear and it will open new reactions about "Torpedo Actions".

In my opinion, as mentioned above, the assessment process applied by IP Court of Milan for the evaluation of the (non) admissibility of the "Torpedo Action" is the proper one, since the first step of the assessment should focus on the enforceability of the patent in Italy and then, only in case of positive outcome, the assessment should focus on the (possible) infringement/non- infringement of such patent in our country.

Finally, I (and I would say also the IP Court of Milan) point out that: if, for example, the German portion of a European Patent is valid and enforceable only in Germany and not in Italy – taking into account the territoriality principle mentioned above -, then Italy is not, may not and cannot be the place of the infringement, since it necessary to assess the validity of the patent in a specific place before any assessment of the infringement. Thus, if the patent is not enforceable in Italy then, article 7, no. 2, of EU Reg. 1215/2012 is not applicable and, as a consequence, the Italian Courts have no jurisdiction.

Footnotes

[1] For the genesis of the definition see Franzosi, "Worldwide Patent Litigation and the Italian Torpedo", [1997] 19 European Intellectual Property Review 382.

[2] See also GADI 2013, 5930 and F. Bossi "Le azioni di accertamento negativo della contraffazione ed il forum commissi delicti" nota a sentenza in Giur. It., 2014, 3

Originally published 27 February 2018

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