The recent publication of our Agata Sobol in the European Intellectual Property Review (EIPR) edited by Thompson Reuters about patent claim limitation in the case law of the Italian Supreme Court.

The applicable Italian provision was introduced years ago, but there are still discussions in the caselaw as to when such requests should be filed and how many times could this be done by the patent holder during court litigation, if the previous limitation requests were held inadmissible or were considered invalid. 

This could lead to sometimes significant delays and for years the lower courts tried to prevent this by developing arguments to justify the refusal of claim limitation requests in certain circumstances. The judgment of the Supreme Court explains in which cases such requests can be rejected without violating the defence rights of the patent owner and the principle of the fair trial.

“This material was first published by Thomson Reuters, trading as Sweet & Maxwell, 5 Canada Square, Canary Wharf, London, E14 5AQ, in European Intellectual Property Review, issue 8/2024 and is reproduced by agreement with the publishers. For further details, please see the publishers’ website.”

Italian Supreme Court on Claim Limitation: How Many Times Can You Try and Can the Judge Prevent You from Trying More?

Biolitec Italia S.r.l. v Eufoton S.r.l. and Alma Lasers Italia S.r.l., Supreme Court, judgment issued on December 11, 2023.

Abstract
In this judgment the Italian Supreme Court gives guidance on the particularly discussed issue of claim limitation requests filed during the court litigation by the patent holder. The applicable provision gives no time limits for filing such requests nor limits the number of times the patent holder can file further claim limitation request after the previous were held inadmissible or were considered invalid. This could lead to sometimes significant delays and for years the lower courts tried to prevent this by developing arguments to justify the refusal of claim limitation requests in certain circumstances. The judgment of the Supreme Court explains in which cases such requests can be rejected without violating the defence rights of the patent owner and the principle of the fair trial.

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