SI POSSONO CAMBIARE LE CARTE IN TAVOLA? RIFLESSIONI SUI PROFILI PROCESSUALI DELL'ISTANZA DI LIMITAZIONE DELLE RIVENDICAZIONI BREVETTUALI EX ART. 79 C.P.I.

With Legislative Decree no. 131 of 13 August 2010, the Italian Legislator has radically amended the third paragraph of Article 79 of the Italian Industrial Property Code, introducing the «judicial limitation of patent claims». The aforementioned rule provides that, «in proceedings concerning nullity [of a patent], the patent holder has the right to submit to the Court, at any stage or instance of the proceedings, a reformulation of its claims that remains within the limits of contents of the patent application as initially filed and that does not extend the protection conferred by the granted patent». The amendment to the third paragraph of Article 79 of the Italian Industrial Property Code has led the interpreter to wonder about the compatibility of the institution of the «judicial limitation of patent claims» with the domestic civil procedure system and, in particular, with the legal provisions that require the definition of the thema decidendum and the thema probandum in limine litis, with limited possibility for the parties to allege new facts, to modify the claims as initially filed or to bring new ones during the proceedings. This work has therefore the aim to understand, first of all, whether or not the proposal of the limitation of patent claims during the proceedings causes the introduction of new facts and, in case of positive answer, how to coordinate it with the limitations generally provided for by our civil procedural system; secondly, whether or not the limitation of patent claims in any stage and instance of the nullity proceedings of patent is to be considered as a modification of the subject matter brought before the Court and, in the event of a positive answer, how such amendment could be considered in compliance with the limitations provided for by our procedural rules and principles on emendatio and mutatio libelli, certainly applicable to the intellectual property litigations.