17 October 2023

The Unified Patent Court issued its first decision in Italy

The Unified Patent Court (UPC) issued its first decision on June 13, 2023. It was the Milan Local Division which pronounced the provision at issue, which is interesting, besides its historic value, also because it faces many procedural issues and provides a useful logic framework to follow in order to project the acts in this type of proceedings.

The case

The above-mentioned decision was issued in the context of a precautionary proceeding aimed at obtaining a protection order of the evidences pursuant to artt. 192 and following of the Rules of Procedure (so-called RoP) and promoted by a German company against an Indian company. In particular, the plaintiff – owner of a European patent granted in Italy and having as object a textile machine – complained about the fact that, during an international trade fair that took place in Rho (Milan), the counterpart was promoting two machines allegedly interfering with its own property right. For this reason, the German company requested the acquisition of a copy of all technical and commercial documentations at the booth of the defendant.

The Local Division of Milan found first of all the existence of the jurisdiction of the UPC as, pursuant to art. 32(1)(c) of the Unified Patent Court Agreement (so called UPCA), precautionary provisions are included in the actions for which the Court has exclusive jurisdiction. Moreover, the actioned property title was a European patent for which the right to opt-out had not been exercised ex art. 83 c. 3 UPCA and art. 5 RoP.

For what concerns jurisdiction, the Judge in charge remembered that it is up to local divisions, and not central ones, to deal with precautionary proceedings pursuant to art. 32 (1)(c) and 33 UPCA. Moreover, the Milanese Local Division, where the forum commissi delicti (that is the place of the alleged patent forgery) took place, was territorially competent even because the precautionary request was presented to the Division to whom the German company intended to bring the merit, in compliance with art. 192(1)(c)RoP.

As for merit, the Milanese Local Division considered that the plaintiff had proven to be the owner of the implemented patent, that the machines of the counterpart were allegedly interferent with the above mentioned right of property, that the requirement of extreme urgency existed, and that there were grounds for the respondent’s failure to issue a prior summons, in compliance with articles 192 (3) RoP and 60 (5) UPCA.

The decision of the Unified Patent Court

Considering the above and once the balance of interests was assessed, the Judge of Milan decided to grant the requested measure and, pursuant to art. 196 (4) RoP and consequently in application of the national regulation in which such measure has to be executed (in the case at issue the Italian regulation), it nominated an expert in order to execute the necessary operation, together with a judicial officer.

Moreover, as provided for in articles 58 UPCA and 196 (1)(2) RoP, in order to safeguard the secret information and prevent the abuse of probatory means, the Judge of Milan ordered that the acquired documentation was accessible only to the attorneys and the technical expert of the plaintiff and that the acquired evidences could be used only in the judgment of merit.

Lastly, the Court ordered that the enforcement of the notification of the appeal and of the proceeding would occur with an alternative method, based on the combination provided for in article 275 (1) RoP and 276 (1) RoP and it considered unnecessary to provide for the payment of a bond by the defendant, therefore declaring the measure immediately enforceable ex. Art. 196 (3) RoP.

What strikes of this decision is its absolute clearness and briefness, along with the timing of its issuance (only one day). This is undoubtedly a good omen for the future.

Chiara Morbidi

Head of Legal Department Studio Legale Turini
IP&IT Attorney, LLM