Patent or Utility Model: which distinction?

Four months ago, the Italian Supreme Court ruled again on the distinction between Patents and Utility Models (full Italian text here).

Vecam S.p.A. brought action before Milan IP Court asking for the declaration of invalidity of the Italian portion of European Patent No. 1024331, owned by Tecnosystemi S.p.A. The patent dealt with a “Flush-mount enclosure, particularly for making provisions for air-conditioning systems”. While resisting against Vecam, Tecnosystemy in alternative asked to establish whether the requirements for conversion of the Patent into a Utility Model were met.

Article 76.3 of the Italian Intellectual Property Code reads “A null patent may produce the effects of a different patent of which it possesses the requirements of validity and that would have been desired by the requesting party, if he had known of the nullity”.

On 13 May 2010, the IP Court upheld the claim of Vecam declaring the Italian portion of European patent no. 1024331 invalid. At the same time, the Court asserted that the legal requirements for conversion of the patent into a utility model were met.

Against the first instance decision, which downgraded the Patent into a Utility Model, Tecnosystemi filed an Appeal before Milan’s Court asking for the Italian European Patent no.1024331 to be recognized valid.

The Court of Appeal confirmed the decision of the first instance stating that the technological solution constituted an utility model. In particular, the Court explained that Tecnosystemi improved the usefulness of something already existing whilst it did not invent anything new.

More precisely, the air conditioning unit was built with a new device allowing a 180 degrees rotation of the flush-mount enclosure’s base aiming to facilitate the condensate’s drain.

Tecnosystemi then filed an appeal before the Italian Supreme Court assuming that the Court of Appeal, as the Judge of first instance had done, had not been able to identify how to correctly distinguish between Patent and Utility Model.

The Supreme Court declared the appeal inadmissible and, quoting two precedents (Italian Supreme Court – Judgments 8510/2008 – and 19688/2009), it clarified that Utility Models: require an inventive step capable of increasing the usefulness of something already existing rather than inventing a completely new product or process.

By this decision the Italian Supreme Court followed the so-called “Qualitative Doctrine”, whereby, while Patents relate to a new product or a new process Utility Models concern an existing object.

However, several scholars share the so-called “Quantitative Doctrine” whereby Patents require an higher inventive step.

Other proposals have emerged in Italy in the last few years, which aim at across-the board abolishing the category itself of utility models. This, on the basis of the intrinsic inconsistency of separating two different levels of ‘inventive character’ vis-à-vis the fact that, even for patents, nothing more than ‘non obviousness’ is required. Thus, once the ‘inventive step’ is a unitary requirement, there is no reason why to retain two different types /level of protection.

Giovanna Sverzellati

 Italian Supreme Court – Judgment No. 16949 of 10 August 2016

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