F. Santonocito, M. Franzosi, and M. Loconsole with IMA Group in Supreme Court win

IMA Group wins before Italian Supreme Court in a dispute concerning coffee pod packaging technology. The company was represented throughout all stages of the proceedings by lawyers Federica Santonocito, Prof. Mario Franzosi, and Michele Loconsole - who recently joined Morri Rossetti, leading to the formation of Morri Rossetti & Franzosi. The team also received support from Maria Lucia Sireci, Legal and Litigation Department Manager at IMA Group.

In the Supreme Court, the team was further assisted by Prof. Bruno Sassani, Professor of Civil Procedure Law at the University of Rome Tor Vergata.

The case concerned the Italian portion of two European patents, which were under opposition proceedings before the European Patent Office (EPO). The first and second instance Courts ruled in favour of validity and infringement, ordering the disgorgement of profits. However, the EPO subsequently revoked the European patents, causing their withdrawal in all designated member states, including Italy.

During the Supreme Court proceedings, that initially begun to review the matter of law of second instance decision, an unprecedented issue rise: the possibility of disputing on the administrative conversion of a revoked patent into a utility model before the Supreme Court. Traditionally, the Supreme Court’s review is not intended for new instances and limited to legal matters already addressed in the decision submitted for review. However, the Court uphold a petition from IMA Group’s attorneys and acknowledged the novelty and the importance of the matter in dispute, inviting and the parties to address that in public hearing, rather than limiting the discussion to written argument (which is the ordinary way to process the petitions for review in civil law matters).

Following the hearing, the Supreme Court annulled the contested decision without referral to second instance Court, establishing an innovative legal principle: the administrative conversion of a revoked European patent into a national utility model shall be considered different from judicial conversion and it cannot alter the subject matter of the case if deadlines for new matter of fact have already expired. Consequently, the validity and any potential infringement of the utility model shall be assessed in separate proceedings.

This decision represents a leading case with significant implications for defence strategies and the enforcement of intellectual property rights, not only in Italy but across Europe.