The Objective Technical Opinion of AIPPI Italy

Gualtiero Dragotti

AIPPI Italian Group lately reviewed its regulation on PTO which may be of some interest for our foreigner readers.
Italian patents and utility models are granted without any substantial examination; this circumstance affects, at some extent, the strength of Italian IP titles and make the courts reluctant to enforce IP exclusive rights without assessing, beforehand, their validity.

The above may create a serious obstacle in case a preliminary injunction is sought for, as the need to carry out an expert report, even on a summary basis, is sometimes non compatible with the urgency of the proceeding.

In order to address said disadvantage AIPPI Italy instituted an ad-hoc proceeding aimed to provide an IP owner with a certified opinion on the validity of the title. Said Objective Technical Opinion (the Italian acronym is PTO, Parere Tecnico Obiettivo) is rendered by a neutral reputed technical expert, chosen by a randomly drawn member of the Executive Committee.

This method creates a convenient gap between the opinion applicant and the selected expert, enhancing the independence of the latter one; at the same time it avoids the disadvantages of a fully random choice, which may end up in appointing an expert who may not be qualified enough for the specific technical field.

In order to allow AIPPI to select the correct expert, the opinion application must set forth the details of the title(s) at stake, the party (es) involved and the names of the experts which should not be selected for conflict reasons.

Once the expert is designated with the method explained above, the applicant contacts directly the appointed expert, submitting to her or him a detailed question and providing the necessary documents. It is left to the expert whether to carry out a priority search. The question may be limited to the issue of the validity of the title(s) or may be extended also to the assessment of the infringement.

The expert hourly fees are set in the AIPPI PTO Regulation, which provides also a maximum cap; the opinion must be given within a 90-days term. AIPPI does not receive any compensation for the service. The opinion is confidential, i.e. the applicant may decide to keep it secret or to use it in a court proceeding. The Secretary, upon applicant request, endorses the opinion with a formal acknowledgment that it has been rendered according to the PTO Regulation (of course, the endorsement does not certify that AIPPI approves the expert conclusions).

The limited costs, the speed of the procedure, the lack of excessive formalities and the reputation of the experts selected by AIPPI induced more and more IP attorneys to resort to the PTO, both before starting preliminary injunction proceedings and in order to obtain a second opinion, e.g. where there is the need to reverse and unfavourable court expert report.

Since the PTO institution, that dates back to years ago, a number of opinion have been rendered. AIPPI does not keep records of the use of PTO in courts, however the PTO Regulation has been presented to the majority of the judges of the IP specialised sections, who are aware of the reputation of AIPPI. A copy of the PTO Regulation in Italian language is published on AIPPI Italy website (http://www.aippi.it/regolamento.php) together with a short presentation of the purposes and working method of the proceeding (http://www.aippi.it/pto.php)