In cases where the validity
of a patent is called into question, the most important preliminary
activity is to evaluate in historical and technical-juridical terms
the factual elements offered by the parties which tend to prove,
or not, the existence of the legal requirements. The administrative
act certifying some of the requirements of the content of the patent
application, which concludes in the grant, certifies that the patent
is enforceable, even for penal purposes. Therefore all the owner
or assignee has to do is draw on the assessment documented in the
patent certificate to prove the validity of his right, and thus
it is up to the person who asserts the non-existence and invalidity
of the patent right to give proof of this.
For such reasons, art. 77 L.I. states "The burden of proving
nullity or cancellation of a patent for an industrial invention
lies in every case with the party challenging the patent".
It must be noted that such presumption of validity of the patent
does not regard the legitimacy of the administrative deed of the
grant, but refers exclusively to the procedural phenomenon of reversing
the burden of proof. Proof can be obtained either through court
appointed, or official technical consultancy (OTC) or through other
means such as the rejection of a parallel application by the European
Patent and Trademark Office.
An official technical consultancy,
according to Italian regulations, is not a preliminary means available
to the parties, nor can it be initiated to compensate for their
inertia. There are two possible ways to initiate an official technical
- The first is so-called traditional technical
consultancy. In this case, the judge, having heard both parties,
nominates one or more technical consultants (OTC), who assume
the authority of assistants to the Judge. To these the judge entrusts
one or more queries and establishes a term within which they must
submit their conclusions.
During their enquiries, which must be carried out respecting all
the rights of the parties according to Italian judicial regulations,
the parties have the right to be assisted by technical consultants
for each party (PTC).
A general rule is that the technical consultant may not investigate
facts that are substantially different from those put forward
by the parties: this principle is partly eased as it is not necessary
for all the elements of such facts to be deduced specifically
and proved in advance, it being sufficient for the facts themselves
to be seriously possible and convincing. The OTC can therefore
request information, even from third parties and without prior
authorization from the judge, in order to check facts that are
closely linked to the object of the investigation. The result
of this, with the aim of assuming probative value, must contain
the indication expressed by the parties. The OTC may also have
recourse to the help of an expert, for whose actions he is responsible.
The judge may accept the conclusions of the OTC, in which case
he need only indicate the source of his conviction, or disregard
them, in which case he must explain a logical and adequate reason
for his disagreement.
It must be remembered that technical consultancy can also be initiated
ex officio, because it does not constitute a violation of the
principle of the availability of proof given that consultancy
represents an investigating means to which the judge may always
have recourse ex officio when the decision of the case requires
particular knowledge or investigation of a technical nature, for
which the elements already gathered in the course of the trial
- The second path is that provided by art.
According to art. 25 E.P.C., which derives from a provision of
Dutch patent law, the European Patent Office is obliged, upon
payment, and on the request of the competent national court of
a member country which judges cases regarding an infringement
or nullity dispute, to supply a technical opinion regarding a
European patent that is the subject of such a dispute. The Federal
Republic of Germany also has a norm corresponding to the Dutch
model, even though the task assigned to the German Patent Office
is more limited. According to art. 25 E.P.C., the examination
division must supply a "technical opinion", in other
words, it must be limited to technical aspects, bearing in mind
that, as regards nullity or infringement, the effective decision
is under the exclusive jurisdiction of the national court.
More generally, the examination division must endeavor to give
a technical opinion on all technical questions that are normally
dealt with in the course of the European examination procedure,
even when these questions cover both judicial and technical aspects.
The examination division must however refrain from making particular
statements concerning the validity of the patent or its possible
In the same way it must express no opinion regarding the extension
of protection (art. 69 E.P.C. and protocol relating to this).
During the procedure according to art. 25 E.P.C., the parties
can be represented by their own PTC.
- Other means of proof.
Art. 77 L.I. establishes no limitation regarding means of proof
and so cases on validity and invalidity of patents can be proven,
besides with the Official Technical Consultancy, with any other
means of proof. Therefore, the statement contained in the description
of the invention attached to the patent application, according
to which the invention claimed includes a very simple solution
to a technical problem, has the same probative value as a confession
outside the hearing as per art. 2735 C.C..
Again, proof can be obtained by presumption, as in the case where
an invention has been published, for example, in foreign magazines
in such a way as to be appreciated by a person skilled in the
art before the application has been filed.
Even testimonial evidence is admitted, for example to show a previous
use of the invention which constitutes disclosure. Testimonial
evidence may also have a negative content, that is, it can exclude
the prior presence of the invention on the market. A sworn statement
produced by the patentee containing a comparison between the invention
and the prior art deduced from the content has the value of a
one-sided defense and is duly considered so by the judge.
The OTC (Technical Consultant)
The Court appointed, or official, technical consultant (OTC) is
a judicial figure introduced by the Code of Civil Procedure presently
in force and replaces the court expert, a judicial figure provided
by the 1865 code. The official technical consultant does not limit
his action to drawing up a report which reflects his opinion on
one or more questions, but rather "lends
assistance" to the judge for the execution of single
acts or for the entire trial. To understand what the OTC's role
is in a dispute regarding patent rights or industrial property,
it is necessary in any case to collocate his role in an "ordinary"
The OTC is considered an auxiliary figure
of the judge, that is, he is one of those who, even though they
are not part of the judicial department, assist the magistrate by
performing functional and sometimes substantially jurisdictional
tasks. This figure is necessary in order to supply the judge with
the necessary instruments in order for the latter to form an exact
opinion, also in questions of a highly
technical content for which the magistrate would need a specific
preparation which he does not possess. It is for this reason that
the object of evaluation of the OTC must always be of a technical
nature without ever deviating into judicial evaluations. When the
judge entrusts an investigation of this type to the OTC, the solution
to the dispute must always be based on evaluations formulated autonomously
by the judge, that is, without these being based on the expert's
The term "Court appointed technical consultant" emphasizes
- that he is a subject called to advise the judge with non-binding
- that he is a technician, that is, an expert in those subjects
that the judge is not expected to know about.
The task of the OTC is to state the facts of the case and provide
the judge with technical explanations that the latter deems suitable
to ask him, but he does not have the task of making up for the inertia
of the parties in proceeding with their probative burden. In fact,
consultancy is not a means of proof,
but a means of judging already acquired facts. Therefore the parties
may not request an official technical consultancy with the aim of
ascertaining the existence of unproven facts, since these facts
must already have been shown at the time when the official technical
consultancy is requested, as the latter may only provide a technical
evaluation of these facts.
According to some legal judgments, it can sometimes happen that
the official technical consultancy provides elements of proof. This
- the data to be proved can only be detected with the aid of
particular tools and/or knowledge;
- consultancy takes the place of judicial inspection in the event
of the latter having to be carried out with the assistance of
a consultant or when the intervention of the latter is necessary
because of the substantial nature and the technical characteristics
of a work;
- it is necessary to verify facts relating to the operation of
a high technology plant, the official technical consultancy becomes,
in addition to a tool for its evaluation, a necessary means for
its investigation and description.
However, the official technical consultancy
can never concern the evaluation of the content of a contract,
or of facts which could be subject to testimonial evidence, nor
can it concern evaluations or interpretations of the content of
judgments. In the field of patents the following guidelines should
- an official technical consultancy on the
validity of patents cannot be ordered on purely explorative grounds,
to subrogate assertive or probative activities for which the relative
parties are responsible;
- an official technical consultancy does
not constitute a preliminary means of an inquisitional nature,
therefore the judge cannot use the work of the OTC to establish
the priorities to be examined;
- in an official technical consultancy the
defendant summoned for infringement does not fulfill the burden
of proof when, excluding nullity for pre-disclosure, he only provides
the OTC with the names of some foreign entrepreneurs among whom
to carry out investigations, without providing documentation on
the characteristics of the products and procedures adopted as
- the petition to admit an official technical
consultancy with the goal of ascertaining the nullity of a patent
for industrial models cannot be accepted if it is not accompanied
by documents on which the technical assessment can be carried
- the burden of proof for lack of originality
of the invention must contain the reconstruction of the state
of the prior art, leaving the evaluation of the inventive level
of the invention to the OTC depending on his specific competence
in the field.
The granting of a technical consultancy is left to the discretion
of the judge, whose ruling, if adequately motivated, cannot be censured
by the Court of Cassation. However, the judge has the duty
to justify his refusal to accept the petition for the official
technical consultancy, when this is of decisive relevance in the
decision. In the event the judge decides not to have recourse to
the assistance of the OTC, he must show with adequate explanations
that he could have solved all the technical problems connected to
the evaluation of the relevant elements essential to the decision,
as he cannot reject the petition to admit an official technical
consultancy and consider as unproven the facts that the consultancy
could have ascertained, without committing the mistake of insufficiency
and inconsistency of motivation. Recourse to technical investigation
falls within the discretional powers
of the judge in question. As such, it can be exercised without the
obligation of explanations. Any negative ruling cannot be censured
when the convincing elements, to disregard the request of the party,
come from probative findings that have already been acquired and
evaluated with a decision immune from logical and judicial flaws.
When technical consultancy is requested by one party with the aim
of investigating facts that are essential to the decision, with
respect to which this is presented as a more efficient and functional
investigating instrument, the judge cannot deny it without rebutting
with suitable motivation the reasons
adopted by the party on the basis of the petition and cannot reject
the substantial claim by observing that with that request the burden
of proof has not been carried out. If the decision of the dispute
depends solely on the resolution of a technical question, because
the fundamental facts cannot be otherwise proved or certified, the
judge on the one hand cannot not use technical notions of common
knowledge nor order technical investigations and, on the other,
refuse the request because the facts, which could only have been
certified by having technical knowledge, have not been proved, without
committing the mistake of insufficiency and inconsistency of motivation.
It is in any case inadmissible to have recourse to the Court of
Cassation, with which it is possible to challenge an admissible
preliminary ruling of the official technical consultancy.
The choice of the Court appointed
The Court appointed technical consultant, or technical consultants,
in the event of a panel of experts being nominated, must, according
to the regulations, be entered in the appropriate register divided
into categories, kept at each court and presided over by the chairman
of said court. When particular technical expertise is considered
necessary, the judge can even appoint a person entered in the register
of a different court or not entered in any register as a consultant,
in accordance with the opinion of the chairman of the court and
with a nominative ruling.
The failure to observe these rules does not invalidate the nomination,
since their function is to direct, and they are not obligatory.
The official technical consultancy. can be entrusted even to a person
not entered in a professional register when the parties do not oppose
this, but it may not be entrusted to a person who is not in possession
of the necessary professional qualifications, unless both sides
agree to recognize his technical expertise. In the appeal
proceeding, the same OTC who lent assistance in the first
instance may be nominated, though the parties have the power to
Activity of the Court appointed
In carrying out his duties in the field of Patents and Trademarks,
the OTC is not limited to evaluating only the technical aspects,
but can also technically reconstruct the
facts as proposed by the parties; however, he must not take
upon himself the burden of proof, for which the parties are responsible.
The OTC must collaborate with the judge both in hearings and in
chambers, providing any explanations when requested. His activity
may also extend beyond hearings and even to other jurisdictions.
All the OTC's activity must be carried out bearing in mind the limits
fixed by the judge in the dispute and therefore must
concern facts that are precisely indicated by the parties
and transformed into questions that are put to him by the parties
and by the judge, on questions very closely linked to the object
of the technical investigation. The official technical consultant,
being bound only by the judge's request, is not required to make
any assessment requested by the consultant of either party, nor
to widen the investigation when he has acquired sufficient judicial
In carrying out the duties entrusted to him, the official technical
consultant can avail himself of the work
of specialized experts, drawing on their conclusions, in
his report, having evaluated them responsibly, with the aim of acquiring,
by means of the necessary technical support, all the judicial elements
which permit him to give the judge a more informed opinion. To have
recourse to the work of specialized experts the OTC does
not require the prior authorization of the judge, nor a formal
nomination, nor the subsequent swearing in of the same experts,
since the result of their investigation goes under the scrutiny
of the consultant himself, and of the judge; however, the parties
retain the power to propose deductions and observations concerning
the investigations, as used in the technical report. The observations
that the technical consultant adds, with an appropriate appendix
to his own report, before filing the same, form an integral part
of this. Although the interested parties have the opportunity to
examine and refute these observations, they can be used by the judge
as the basis of his decision.
If the report is given in an oral rather
than written form it does not imply nullity of the official
technical consultancy, as art. 62 C.C.P. expressly provides for
such a report in hearings by the technical consultant regarding
the investigations entrusted to him.
Declarations made and information supplied
by third parties to the OTC in the course of his investigations
concerning facts closely connected with the object of the investigation
are not valid in any way, even less so if they are gathered when
the judge is not present, such as real testimonial depositions;
however they do have, even when neither side contests, an appreciable
investigative value. When the consultant has indicated the names
of parties who have been freely summoned, the judge, who must evaluate
every assessment of the OTC exceeding the limits given to him, can
consider these assessments as elements of proof, or invite the parties
to prove, positively or negatively, such circumstances.
The OTC may not, without the consent of the parties, consider documents
that have not been acquired at the trial, as in this case
it would not be a question of using simple factual elements, but
of evaluating a document that could have been used in the case,
only in the case where the judge, on the specific request of the
parties, had ordered it to be used and had certified its substantial
The consultant authorized to carry out investigations without the
judge being present must communicate to the parties in sufficient
time, as per art. 90, the day, time and place of the beginning of
operations, guaranteeing the parties' presence. No particular form
is laid down for this communication,
which can also be verbal; in the event of the communication being
given by means of a statement inserted in the minutes of the hearing,
the absence of the defending lawyers is irrelevant, as the content
of such minutes is presumed to be known and does not have to be
communicated to the parties and no communication has to be given
to the absent party.
The Court of Cassation has stated several times that communication
is obligatory with exclusive reference to the initial phase
of the operations carried out by the experts, and so this does not
apply to every subsequent investigation which the consultant himself
considers necessary: it is the responsibility of the parties themselves
to follow how the various phases develop.
In the event that the consultant postpones operations to a date
to be established and then takes them up again without informing
the parties and their consultants, directly or through the court
clerk, it is necessary each time to assess if this has been potentially
damaging and if it has effectively prejudiced the parties' defense
or not. When there is a violation of the defendant's rights, since
he has not been placed in a condition where he can follow and check
the OTC's operations, the examination will be declared null. The
violation of the defendant's rights in the execution of the technical
consultancy gives rise to relative nullity
of the report, and therefore this must be asserted in the
first motion or defense after the
report has been filed, otherwise it is amended. Possible nullity
cannot be thrown out by the judge ex officio, nor for the first
time at the appeal level.
Minutes and report
Art. 195 C.C.P. states that "minutes should be taken of
the investigations made by the consultant when these are carried
out with the intervention of the investigating judge, but he may
also order the consultant to draw up a written report.
If the investigation is carried out without the intervention of
the judge, the consultant must draw up a report in which he must
also include the parties' observations and claims.
The report must be filed with the clerk's office before the date
fixed by the judge".
From the text of this article it has been deduced that the written
form is not essential, but the documentation of the activity carried
out by the OTC is; it thus derives that:
- if the OTC acts with the intervention of
the judge, the documentation relating to his activity will be
noted in the minutes of the clerk of the court, but if postponements
and observations concern complex questions, the judge can order
a report to be drawn up. It has also been claimed that if the
findings of the investigation are inserted in the minutes, they
remain the work of the OTC, and remain distinct from the investigation;
consequently, whereas the minutes constitute proof until an action
for falsification is filed, the findings of the OTC, as he is
not a public official, can be contested by any means of proof;
- if the investigation is carried out without
the intervention of the judge, the OTC must draw up a report,
even orally in a hearing. In such a case there is the obligation,
for cross-examination purposes, to insert the observations that
the parties have made directly or through their technical consultants.
Jurisprudence maintains that if the parties' observations are not
inserted into the report by the OTC, this does not constitute grounds
for nullity, as long as it is clear that these were taken into consideration.
The term that the judges indicates for filing the report is non-peremptory:
it can therefore be extended and non-compliance does not mean that
the consultancy is nullified. However if the OTC's report on which
the judge founded his conviction is filed after the case has been
remitted to a panel of judges, the procedure is annulled on the
grounds that the right to cross-examination has been infringed.
Moreover if the term for filing is not respected it can constitute
just cause for replacing the OTC, as per art. 196 C.C.P.
If the judge does not fix such a term pursuant to art. 289 C.C.P.:
"the investigating proceedings which do not contain the
date of the next hearing or term by which the parties must conclude,
they can be integrated, on the request of one party or ex officio,
before the peremptory term of six months from the hearing in which
the rulings were pronounced, or from their communication or notification
if so prescribed… ".
"The judge still has the authority to order the investigation
to be renewed and, for serious reasons, the technical consultant
to be replaced" art. 196 C.C.P.. A precondition for renewing
the investigation is that the results of the consultancy that has
already been carried out are insufficient or unsuitable.
When, on the other hand, the report or the minutes are not clear,
there will be no renewal order but simply a request for clarification.
If the request to renew the investigation (or to summon the consultant
for clarification) is rejected, the judge is not obliged to justify
his decision at length, as it is sufficient for him to recognize
the results already achieved as exhaustive, considering that the
reasons which convinced him not to admit such investigations are
adequately contained in such acknowledgement.
Jurisprudence has stated that when the defendant, for reasons of
necessary or permissive jointer of parties, executes a prejudice
of his right of defense without having taken part in the consultancy
operations, the judge must renew the same consultancy, since he
cannot take a decision towards the defendant on the basis of what
has been carried out in his absence. It is considered that the Court
appointed OTC must not inform the consultant of the parties of new
investigations ordered following the request of clarifications
after the report has been filed.
The appeal judge too, when he considers
the results of the consultancy that has already been carried out
in the first degree are exhaustive, is not obliged, even when one
of the parties specifically requests it, to order the renewal of
an investigation already carried out, nor is he limited to a specific
rebuttal of the request, since he need only re-state that the elements
that have already been acquired are sufficient.
"When he considers it appropriate, the chairman of the
Court invites the technical consultant to attend the debate in front
of the panel of judges and express his opinion in chambers in the
presence of the parties, who may clarify and develop their reasons
through counsel" according to art. 197 C.C.P.. Calling
the OTC to chambers is merely at the discretion of the chairman
of the panel of judges and if this is not done, it does not represent
a procedural error.
If this power is exercised, the parties who can develop and clarify
their reasons through their counsel and their consultants must be
called, since it is thus that cross-examination is carried out.
Both the Court appointed OTC and the consultant of the parties must
retire to chambers before the deliberation of the case begins as
per art. 276 C.C.P.. Even when invited to attend the debate, the
OTC is an assistant to the judge and can ask the parties for clarification.
The function of the OTC,
recusal and responsibility
"The technical consultant chosen among those entered in
a register must give his services, unless the judge acknowledges
that there is a just cause for abstention.
The consultant can be challenged by the parties for the reasons
indicated in art. 51.
The judge who appointed the consultant is the only person who can
make a judgment on the recusal." ex art. 63 C.C.P..
The OTC can refuse the assignment only when there is a valid reason
for abstaining, as his obligation derives directly from the law.
The task of deciding whether the reasons presented by the OTC are
just, in other words dictated by the interest of the service and
not personal interests, is entrusted to the judge. It has been claimed
that nullity of the consultancy is not valid if the OTC should have
abstained and failed to do so. The reasons for challenging the OTC
are the same as those for the judge; the investigating judge will
be the person to decide on requests for abstention, recusal or the
non-acceptance of the assignment.
"The consultant must respect the provisions of the penal
code regarding experts. In any case, the consultant who incurs gross
negligence in the execution of the acts that are requested of him,
will be punished by up to one year's imprisonment and a fine of
up to twenty million Italian Liras. Art. 35 of the penal code is
applied. In any case, compensation for damages caused to the parties
is due." ex art. 64 C.C.P..
In addition to the responsibility provided for by said article,
the OTC is subject to disciplinary responsibility as per the provisions
of the Code of Civil Procedure and professional laws, both because
he is entered in the register of OTCs and because he belongs to
the professional guild or board. The norms of the penal code which
concern the responsibility of experts are applicable to the OTC.
Gross negligence is necessary in
this case if the OTC is to be held responsible.
An example of gross negligence could be the loss or destruction
of the contentious object or documents entrusted to the OTC; gross
negligence is also valid when the consultancy seems unreliable.
It is doubtful, however, whether it is valid in the event of an
error even if this is due to manifest malpractice. In the event
of gross negligence compensation for damages is also due, irrespective
of whether a pecuniary punishment has been applied.
Damages however must always be proved.