The “Italian torpedo” is a frequently favoured procedural device in European cross-country patent infringement disputes. Here, an alleged patent infringer brings forward an action in Italy in which he seeks the declaration by an Italian court that he does not infringe one or more certain foreign patents (negative declaratory action). If the counterparty then brings an infringement action against the alleged infringer in a country where such a patent is valid, this action is to be suspended under the European Council Regulation (EC) No. 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters. This “blocks” the infringement action for years, because and insofar as the Italian courts live up to their reputation of not conducting legal proceedings expeditiously unless pressed by the petitioner, who is not in a hurry in such “torpedo” cases. The admissibility and merits of the Italian action are irrelevant in this context.
Within the framework of the Regulation (EC) No. 44/2001, it is important that the Italian torpedo is brought before the Italian court before the counterparty files an infringement suit. In a recent case, a party that felt threatened by a European patent application wanted to be especially quick and filed its negative declaratory action with the Tribunale de Milano already during the patent examination procedure. The request of this action was considerably broad in the sense that the petitioner was seeking a ruling that none of its “activities” in Belgium, France, Italy, Germany, the Netherlands and Spain would infringe on the patent and property rights derived from it.
This torpedo was then used as a defence against an infringement suit at the District Court of Düsseldorf. This infringement suit was based on German parts of European patents which were granted for divisional applications based on a common parent application. The latter was the one mentioned in the request of the Milanese action.
However, the District Court and, on appeal, the Higher Regional Court rejected the motion to suspend. The appellate court essentially found that if the Milanese court had decided soon after receiving the negative declaratory action – thus before the patents were granted – its decision could not have dealt with the infringement of existing patents. Therefore, the Italian subject-matter under dispute could not have been the same as subject-matter of the Düsseldorf case, namely the infringement of – granted – patents. This is not changed by the fact that the Italian proceedings were delayed until after the patents had been granted, especially since the request was not amended to reflect this aspect. So, in view of the courts, Regulation (EC) No. 44/2001 did not require a suspension.
The court’s reasoning was not based on the fact that the divisional patents, from which the patents-in-suit for the action in Düsseldorf derived, were not specifically mentioned in the Italian proceedings. Rather, the decision generally makes clear that the Italian torpedo cannot be fired before the patent is granted, which is of course appreciated.