“Application of the Doctrine of Equivalents”

• 1. As regards counterfeiting of patents for industrial inventions carried out for equivalence pursuant to Art. 52, para. 3^bis of Legislative Decree No. 30 of 10/2/2005, as modified by Legislative Decree No. 131 of 13 August 2010, the judge, in determining the scope of protection conferred by the patent, must not limit himself to the literal content of the claims, interpreted in the light of the description and the drawings, but must balance the fair protection of the owner with the reasonable legal certainty of third parties, and therefore must consider every element substantially equivalent to an element indicated in the claims.

• 2. For this purpose, he may avail himself of different methodologies for the assessment of the equivalence of the inventive solution, such as verifying whether the contested embodiment allows the same final result to be achieved with the adoption of variants that lack originality because they are obvious in the light of the knowledge of the average technician skilled in the art who faces the same problem.

• 3. However, the judge cannot give importance to the subjective intentions of the patent applicant, albeit historically inferred through the analysis of the activities carried out during the administrative proceedings which lead to the granting of the patent.