Relevant pre-divulgation online of a patented product for Italian IP law

In accordance with decision no. 4352 published on 08/04/2015, the Court of Milan, in Collegial Composition, Section specialized in the field of enterprise, stated that the relevant pre-divulgation for the purposes of art. 46 c.p.i. is the one generalized and open to any interested or the general public.

Therefore, the disclosure of a patented product before the filing date of the patent does not constitute disclosure when it occours through a general view from which it is not possible to infer the characteristics of the patent.

Two contendants’ machines are under patenting

C. and I. are two international leaders in coffee capsule packaging machines, competing in the same market.

A machine for packaging products in cardboard boxes using an innovative multi-stage system is advertised on the internet. The load robot and the end section are two known components, but in this case they operate synchronized. Thanks to this invention, the load robot, which is the slowest component, becomes faster, thus increasing the efficiency of the machine.

This machine, consisting of a plurality of devices with independent movement, is patented by company C. and advertised.

Some time later, it is discovered on the internet that the company I. has published on its website the sale of a machine very similar to the one patented by C.

In order to be able to safely challenge the counterfeiting of the patent, you would have to see the machine in operation. But, the smart eyes of its software designers and engineers don’t miss that, as far as you can see, a small modification would be enough to make it identical to the machine protected by the patent of C. In fact, it appears that the machine is prepared for the assembly of a second engine, that is, the one that synchronizes two devices providing an innovative acceleration.

C. has also patented another invention, concerning a device that can be used in a packing machine. It allows to alternate the items to be boxed, gaining space inside the boxes and increasing the quantity of canned items. Even this patented device seems to look a lot like the one disclosed by the competitor I.

In the offices of the C. rival, it is wondered how I. was able to learn about these patents, making itself able to create machinery in every way similar to those made by its competitor.

The espionage of industrial secrets is certainly not a fictional figure, indeed. Every large company is very afraid of this danger, considering the great industrial and economic value of patents.

However, it is not a matter of spy penetrating a rival’s know-how; sometimes it depends on this very rival, who in good faith anticipates to third parties some important details of his invention before patenting it. Industrial law calls this wrong move "predivulgation."

In fact, on 25 August 2010, before C.'s patents were filed, two employees of I. went to an Italian coffee company, which showed them an automatic capsule packaging plant consisting of a C. machine without any confidentiality constraints. It means that what the two employees have seen, can be reported to the mechanical department of their company and used to process a similar project without incurring any violation.

Another episode that may have aroused the rival's interest, is the publication on Youtube.com of a video dating back two years before the patent filing, where the method of operation of the machine is shown. The video has received 205,027 views, with someone interested in replicating the invention among them.

Different stages of the trial

Before entering the Court, in 2013 C. filed an appeal for seizure and inhibition for patent infringement and patent applications. After the rejection, C. lodged a complaint, which was rejected by the College. At the end of the pre-trial phase, both parties sued their respective competitors before the Milan Tribunal. Therefore, the two cases were brought together by the Judge under Articles. 273 and 274 c.p.c.

Respective argumentations    

I. asked for the nullity of the three patents operated by C. for descriptive insufficiency, for predivulgation, lack of novelty.

C called for the investigation of the wrongdoings of counterfeiting of its patents and of unfair competition so-called "employee" and for the appropriation of merits and mendacio against I., contesting the unavailability and irrelevance of the arguments of I, requesting that the patent be considered to be fully valid.

The definition of unambigously accessibile web document   

The Tribunal found that one patent was valid and that another was null and void, stating that a machine made by competitor I. does not infrible the patent, but all the others did. It has therefore ordered the prohibition of the continuation and repetition of production and/or marketing and/or import and/or export and/or advertising, also through the internet, and/or sale of the machine as well as any other machinery, also marketed with a different acronym, which implements the characteristics of counterfeit claims.

The Judge ruled that a test should be carried out to verify the recurrence of the online prevulgation of a patent. In two phases, it occurs whether the document describing the machine can be found through search engines, using one or more linked keywords, and whether the document remains accessible to the same URL for a long enough period for the public to study it properly. In the event that both conditions are met, the existence of the predivulgation can be established without a shadow of a doubt. Otherwise, further evaluation will have to be done on a case-by-case basis. For example, if the document is a YouTube video, the number of views should be assessed.

The Judge considered that the machine contained a counterfeit, while for the various Italian portions of patents for which the applicant sought protection, only in some cases were deemed valid.

The machine, it is read in the judgment, applies all of C.'s claims (except one) and this results from the technical advice that referred to the videos that film the operation of the machine. However, the inclusion of counterfeiting excludes the recurrence of unfair competition under Article 2598 paragraph 3 c.c., and also the challenge for appropriation of merits.

Obligation of confidentiality

It is an interesting definition of predivulgation the one offered by the judgment referring to the machine. In this case, letting people into the room where the machine is located does not necessarily mean disclosing the industrial secrets of its operation before it is put on the market. It is essential that we can have a more detailed view and that we are not bound by confidentiality obligations. Otherwise, there will be a general overview that is not useful in revealing the characteristics and information it is giving is not opposable for the purpose of assessing the novelty and inventive nature of the patent-protected invention.

Equally, the previous citation given by the decision of the Board of Appeal EPO in the case T1552/06, which the judge has appealed to whether or not the predivulgation is used in the event that the video is present on the internet and can be found through search keys in public search engines, before the priority or filing date of the patent or patent application.

The Board of Appeal precedent   

Following Board of Appeal precedent EPO T1553/06, a document stored on the World Wide Web findable by entering keywords in a public web search engine before the priority or filing date of the patent or patent application is not always a directly and unambiguously accessible document. Only whether all the conditions set out in the test are met, it can be safely concluded that the document was made available to the public in the sense of Article 54(2) EPC 1973.