PATENTS | The Italian Supreme Court on privileged evidence and discrepancies in patent applications

On 8 April 2024, the Italian Supreme Court issued its decision No. 9248 on the evidentiary value of the decisions of the Italian Patent and Trademark Office (UIBM) on patent applications and the scope of protection of a patent in case of discrepancies between claims and drawings. The Court held that the decisions of the UIBM shall not be considered as “privileged evidence” in civil proceedings due to the lack of complementarity between the decisions of the UIBM and of the courts. The Court also highlighted that inconsistencies between claims and drawings are not grounds for a declaration of invalidity. Indeed, in accordance with the case law of the Unified Patent Court’s Court of Appeal, the scope of protection of a patent shall be based on the text of the claims.

Newsletter n. 96 – May 2024