Don't Let Your Opted-Out European Patent Be Torpedoed

• Jurisdiction: European Union
• Law Firm: Maucher Jenkins
• Subject Matter: Intellectual Property, Patent
• Author: Mr Hugh C. Dunlop
• Published date: 16 March 2023

The term "Italian Torpedo" was coined in 1997 by Prof. Mario Franzosi¹ to refer to a patent litigation strategy of preventing a national court in Europe (e.g. the courts of Germany) from proceeding with an infringement action by filing a pre-emptive action in another, much slower court (particularly an Italian court). If a party has advance warning that it is about to be sued for infringement of a European patent, e.g. an Italian company exporting to Germany is about to be sued in Germany, it files an action for a declaration of non-infringement in Italy with a request for the declaration to extend also to the corresponding German patent and, by virtue of the lis pendens rule of Brussels Convention², the Italian court becomes the court "first seised" with the action and has exclusive jurisdiction - i.e. to the exclusion of the German court. The German court would have to stay the proceedings pending the decision of the Italian court. Italian courts are notoriously slow, so the action might be kicked into the long grass for as much as 10 years. The action is said to be "torpedoed". The court in Belgium is also a popular option - a "Belgian torpedo".

Italian Torpedo actions fell out of favour for a decade following a 2003 Italian Supreme Court decision which ruled that the Italian Court did not have jurisdiction over the foreign cause of action³, but this was reversed by another decision in 2013.⁴ The torpedo action must be for a declaration of non-infringement, rather than a nullity/revocation action.⁵

The tactic of torpedoing a patent infringement action arises in the case of a European patent opted out of the Unified Patent Court. The UPC is designed to be fast. The preamble to the rules expects a final oral hearing within one year.⁶ It is a vastly preferable forum for litigating over patent infringement in Italy, Belgium and many other territories of the EU where it has jurisdiction. Patent owners may choose to opt out of the jurisdiction of the court for good reason. A principal reason arises where a patent is validated in many states and the proprietor does not want the patent to be open to central revocation. Similarly, opting out might discourage counterparties in different states joining forces in a single action. For example, where a patent is licensed state-by-state, the patentee may be content with the status quo.

But opting out might not be wise if there is a likelihood that an action might have to be brought in Italy, Belgium, France or any...