The Supreme Court clarifies the limits and burdens of the patent holder in infringement actions.
A recent decision of the Supreme Court clarified that a patent owner bringing an action for infringement is not required to indicate the specific technical problem solved, nor the specific means of the solution. This article analyses this important legal principle, from the concept of the “objective technical problem” to its practical implications in infringement proceedings.
Index
- Patent and “objective technical problem”
- The supreme court ruling: the case study
- The burdens of the patent holder
- Conclusions: the importance of proper patent drafting
Patent and “objective technical problem”
In the patent system, an invention is commonly defined as a new and original solution to a specific technical problem. However, the features of such problem and its solution must be objectively inferred from the patent claims, as possibly supplemented by the description and drawings.
In this sense, reference is made to the “objective technical problem”, as it is not left to the subjective interpretation or explanation of the inventor.
The supreme court ruling: the case study
In its decision No. 17314 of last June, the Supreme Court dealt with a case in which the Court of Appeal had upheld the first instance ruling declaring the patent null and void, on the grounds that the patent holder (who had brought the appeal for infringement) had not specified the technical problem solved or the means of its solution.
However, the Supreme Court set aside the decision of the Court of Appeal, noting that the scope of protection of a patent must be determined on the basis of the wording of its claims, which are to be interpreted and clarified in light of the description and drawings.
It is therefore for the judge, with the assistance of a technical expert, to determine the objective technical problem addressed by the patent and the corresponding inventive solution, and to establish whether the contested product or process addresses the same problem by proposing the same or an equivalent solution, in which case infringement exists.
The burdens of the patent holder
Once a patent has been granted, it benefits from a presumption of validity. However, in infringement proceedings, the patent holder is not required to explain in detail the technical problem solved or to provide further information on how the solution was achieved.
The patent holder, on the other hand, is not allowed to, during litigation, alter the objective technical problem or the inventive concept originally proposed in the patent (although a limitation of the claims may be possible).
The holder’s true burden lies at the drafting stage, ensuring that the patent application correctly identifies and describes the technical problem and the corresponding solution, thus clearly claiming the new and original inventive contribution.
Conclusions: the importance of proper patent drafting
Il caso esaminato sottolinea l’importanza di una corretta e accurata redazione del brevetto, che deve individuare chiaramente il problema tecnico e la relativa soluzione.
It is therefore essential that patent holders work closely with qualified patent attorneys at the filing stage, to ensure that the patent is drafted in a way that effectively protects their rights and avoids disputes or uncertainties that could arise in future legal actions.