The Italian legislation allows the enforcement of a patent application in a civil trial with ordinary or expedite proceeding even if the patent application has not already been granted.
In fact, art 132 co.1 of the Italian Code of Intellectual Property (c.p.i) explicitly enshrines that the measures consisting in publication of the interim relief order or of the judgment (art. 126), preliminary expert report (art. 128), seizure or judiciary description also inaudita altera parte (art. 129) and inhibitory (art. 131) can be accorded during the patenting procedure (as in Milan Court, judgment n° 2596/2017 published on /03/2017 RG n°58436/2013). Patent applications do not benefit from the presumption of validity accorded to granted patents (there isn’t the inversion of burden of proof ex art.121) and therefore, the jurisprudence judged that the plaintiff has to prove in the request for preliminary injunctions that there is the reasonable expectation that the patent application will be granted (as in Milan Court, hearing 15/02/2010, registered on 15/02/2010; Luigi Carlo Ubertazzi, P. Gaetano Marchetti, Commentario breve alle leggi su Proprietà Intellettuale e Concorrenza, quinta edizione)
So, as laid down in art. 53 co. 2, the effects of the patent do not start on the granting date but on the date on which the application is made available to the public or notified ad personam.
Ordinarily the applicant can enforce its patent application against third parties from the date on which the Italian Patent and Trademark Office (UIBM) publishes the patent application i.e. after 18 months from the priority date or, if required by the applicant, after 90 days from date of filling (art 53 co. 3); otherwise, the applicant can enforce its rights (before the above-mentioned publication by the UIBM) from the date on which the patent application with description, claims and any designs is notified to the physical or juridical person from which the applicant wants to protect itself. The notification to third parties ex art 54 co. 4 has to be done by the bailiff as laid down in art. 137 of the Italian Code of Civil Procedure and it has effect only against the person to which the patent application is notified.
The European patent applications benefit of the same protection granted to the Italian patent applications with the particularity that, in the view of art 54, the corresponding translation in Italian language must be made available to the public by the UIBM or notified to the person concerned; the same is, in the view of art. 55 of the c.p.i and art. 153 of the European Patent Convention, for the international patent applications containing the designation or election of Italy. Without the notification of the Italian translation, the request for preliminary injunction is rejected (Court of Milan, proceeding R.G n. 57568.09).
Obviously, when a patent application is enforced, it must be reminded that the claimed scope of protection is provisional; for this reason, art 120 co. 1 provides that the judgment may be issued only after that UIBM has examined the patent application. For this purpose, the Court can ask the UIBM to examine the patent application without delay and prior to patent applications previously filed. This disposition counts, in the view of art 120 6-bis, also for actions for a declaration of non-infringement, including those brought as precautionary measure allowing, de facto, to begin an action of declaration of non-infringement also against a patent application not granted.
Comment by Guglielmo Pace