Italy

A cohort of larger international firms has swooped onto the Italian market in recent years, which has put increasing pressure on the traditional IP boutiques for which the scene is known. The Italian Patent and Trademark Office’s rule change on supplementary protection certificates (SPCs) in 2016 has prompted a veritable feast of pharmaceutical litigation, marking a sharp turnaround in the last 12 months. The changes have been felt in the country’s pharmaceutical filings, too – although in a less radical fashion. New patent applications are respectable and prosecution shops are seeing an increase in SPC work. Looking abroad, domestic firms seeking international protection spy a hospitable venue in China and profitable forays there have become a strong source of growth for Italian IP firms. With the timeline for Unified Patent Court (UPC) implementation still uncertain, preparations for its arrival are still in limbo. Should the United Kingdom fail to ratify, the prospect of Milan being a central division location for the court has been getting lawyers excited. However, practitioners remain sceptical about the UPC’s claims of ease and convenience, believing that most high-value innovators will prefer to use more time-tested routes to rights protection.

Firms: transactions

H
Bonelli Erede Pappalardo
DLA Piper Studio Legale Tributario Associato
Hogan Lovells Studio Legale
Studio Legale Bird & Bird
Studio Legale Jacobacci & Associati

Firms: prosecution

H
Barzanò & Zanardo
Bugnion SpA
Buzzi Notaro & Antonielli d’Oulx
Jacobacci & Partners
Modiano & Partners
Società Italiana Brevetti SpA
Studio Torta SpA

Firms: litigation

1
Hogan Lovells Studio Legale
Studio Legale Bird & Bird
Trevisan & Cuonzo Avvocati
2
Avvocati Associati Franzosi Dal Negro Setti
Bonelli Erede Pappalardo
DLA Piper Studio Legale Tributario Associato
Studio Legale Jacobacci & Associati
Studio Legale Sena e Tarchini
3
Martini Manna Avvocati
Studio Legale Vanzetti e Associati
Avvocati Associati Franzosi Dal Negro Setti
The distinguished Avvocati Associati Franzosi Dal Negro Setti stands out for its work on both sides of the contentious/non-contentious divide; it has all the key industries locked down and dispenses 360-degree counsel alive to long-term business objectives. A “mightily experienced” lawyer, Mario Franzosi has played a role in some of the country’s biggest patent cases and advised on multifarious transactional matters. “Many Italian lawyers have learned from him.” His teammate Vincenzo Jandoli also has a formidable reputation in both courtrooms and backrooms. He is a pharmaceutical hotshot who understands the pressures of running a multinational business.
Barzanò & Zanardo
Some firms provide legal support in a vacuum, but not Barzanò & Zanardo. Whenever its attorneys win a new mandate, they take the time to learn that client’s overall commercial aims, so that they can deliver valuable advice and make shrewd filing calls. What is more, with seven offices across Italy, the side is never more than a stone’s throw away from domestic patrons. Giovanni Zanardo is a name for the address book.
Bonelli Erede Pappalardo
Rights holders in the market for collaborative, hands-on portfolio management and creative solutions to infringement troubles need look no further than Bonelli Erede Pappalardo. There are plenty of extremely experienced practitioners in the firm’s IP practice, but none more so than Giovanni Guglielmetti and Tommaso Faelli. Guglielmetti recently showed off his transactional skills assisting Dompé on the drafting and negotiation of multiple agreements with MolMed for the manufacture, supply and licensing of a medical treatment for an orphan disease. “He is charismatic, strategically smart, responsive, excellent in client interactions, a true gentleman and a natural leader. Everyone loves working with him.” A leading light of the firm’s digital innovation unit, Faelli loves handling cloud computing, e-commerce and big data issues. Botti & Ferrari is an “excellent firm” whose razor-sharp practitioners are sought after for their “tremendous experience” handling proceedings at the European Patent Office. Rinaldo Ferreccio could practically handle oppositions and appeals with his eyes closed; he has a sixth sense for what will cut the mustard with judges. Life sciences is his strong suit. Meanwhile, Mario Botti specialises in electrical engineering issues. He has the technical knowledge to steward applications around even the most outwardly insurmountable obstacles.
Bugnion SpA
With 16 offices across Europe and the United States, Bugnion has the resources and reach to effectively handle multi-jurisdictional matters, this, in addition to its transparent fee structures, dazzling responsiveness and commercial savvy, make it an inarguable choice. Cristina Biggi has extensive experience providing contentious support to both generic and originator companies in the pharmaceutical sector. She is a creative, never-say-die litigator who is happy to burn the candle at both ends for her clients.
Buzzi Notaro & Antonielli d’Oulx
Historically Buzzi Notaro & Antonielli d’Oulx has been best known for its mechanical and automotive work, but lately it has been grabbing attention in the life sciences space too. Having begun her career as a researcher for an Italian biomedical company, Cristina Freyria Fava is a big reason for this recent development. Her unique in-house experience allows her to easily get on the same wavelength as rights holders. Having 40 years’ experience under his belt, Luciano Bosotti is also a real client magnet. The ceaselessly eloquent litigator knows how to advise on a case that has parallel proceedings across Europe.
DLA Piper Studio Legale Tributario Associato
With lawyers in Europe, Africa, Asia-Pacific, the Americas and the Middle East flying the flag for DLA Piper, the firm’s clients can count on joined-up, global support for all their patent problems. A recent highlight for the Italian squad was representing Alpinestars on multi-jurisdictional infringement proceedings concerning motorcycle airbag technologies against competitor Dainese. These were led by the indomitable Gualtiero Dragotti – “a highly proficient and personable litigator”. His teammate Roberto Valenti has been busy on the transactional side, performing due diligence for Zwilling JA Henckels’ acquisition of Ballarini. “He is a tremendous problem solver with great pragmatism, technical competence and commercial understanding. Something that sets him apart is the way he listens to various perspectives and works collaboratively to find the best outcome possible.” GLP supplies clients with sophisticated 360-degree IP counsel at a reasonable price – a rare combination that has earned it a dedicated following at home and abroad. The “extremely reliable, professional and responsive” Davide Luigi Petraz perfectly embodies the firm’s holism and customer-focused outlook. “He is unique in being both an accomplished patent attorney and an experienced lawyer – a rare and great achievement.” His co-managing partner Daniele Giovanni Petraz also understands how to keep clients happy. “He is always very understanding and accommodating to their needs and brings a rigorous business perspective to the table. In many respects the Italian patent regime is the same as those elsewhere in Europe but, where it differs, he will identify the best ways clients can capitalise strategically. A forward thinker, he dispenses advice not just on how the market stands at the moment but also on where it’s likely to go.”
Hogan Lovells Studio Legale
“Hogan Lovells is one of the few international firms to have created a truly successful IP practice in Italy; whereas most of its rivals only have a couple of people on the ground carrying out ancillary IP work, it has a lot of lawyers with specialist patent knowledge and busy calendars.” Pharmaceutical companies make a beeline to Giovanni Ghirardi for his startling track record on big-ticket cases and inside-out regulatory knowledge. Also based in Milan, the “extremely capable” Luigi Mansani is an “impressive litigator and highly respected arbitrator” who loves nothing more than safeguarding a cutting-edge computer-related patent. For top-notch infringement support, rights holders need look no further than IP Law Galli. Its pragmatic, battle-hardened practitioners may have seen nearly everything there is to see in the courtroom – but they still have fire in their bellies. Name partner Cesare Galli is the cynosure of all eyes in the community. He was personally involved in the process that led to Italy signing up to the Unified Patent Court Agreement and had the honour of assisting the official delegates in the drafting of the Rules of Procedure. One of his recent highlights involved defending Biomet against a preliminary injunction filed by Heraeus, something he handled alongside Mariangela Bogni, whom peers acknowledge is also “among the best lawyers in the country”. Pharmaceuticals is her area of expertise, but she also takes a keen interest in new plant varieties.
Jacobacci & Partners
Founded in Turin in 1872, Jacobacci & Partners is a firm fixture on Italy’s IP landscape. Its internationally minded patent group manages portfolios expertly and – with 13 offices across four European countries – possesses the resources and local knowledge to handle cross-continent cases efficiently and effectively. The fact that around half of the top 100 global brands have entrusted it with the protection of their most valuable rights is no surprise. Paolo Ernesto Crippa should be the first port of call for interested parties.
Martini Manna Avvocati
“Martini Manna Avvocati is a fantastic firm that produces top-quality work across an impressive range of industries. Loads of companies basically see its members as internal colleagues rather than external consultants and therefore outsource far-ranging stuff to them without hesitation. Everyone there is not only extremely competent and professional but also proactive and collaborative.” Founding partners Elena Martini and Luigi Manna are obvious choices for high-stakes litigation. “Both Martini and Manna put themselves in clients’ shoes and are extremely agile and hands-on.” They specialise in the telecoms and electronics sectors, respectively.
Modiano & Partners
Supported by colleagues in Munich and Lugano, Modiano & Partners’ Milan crew is equipped to secure watertight IP rights protection across Europe. Its pragmatic lawyers manage portfolios with a steady hand and rally together whenever infringement clouds appear on the horizon. The “excellent” Alessandro Sanchini marries technical mastery with an intimate understanding of commercial pressures to provide rock-solid non-contentious support and then passes the baton to Micaela Modiano when things heat up. “She handles parallel cases across different countries with aplomb – someone who can be relied on to put in a top performance wherever and whenever.”
Società Italiana Brevetti SpA
“Società Italiana Brevetti is as good as it gets in Italy for patent filing and prosecution.” Even when under the sort of pressure that would bring other lawyers to tears, the firm’s professionals calmly produce flawless work on budget and on time. The team’s fortes include obtaining supplementary protection certificates and overcoming obstacles in relation to plant breeders’ rights. Claudio Germinario and Elisabetta Papa are the lawyers to go to for pharmaceutical advice. “Germinario is a great expert in the field. He’s always available and delivers accurate advice every time.” Equally popular, Papa is appreciated for her “ability to analyse complex technical matters astutely. She proposes solutions that really maximise the potential of your products”. The internationally minded Antonio Mario Pizzoli specialises in obtaining protection for electronic patents abroad, particularly in the United States and East Asia. Key players in the iron and steel industries send a lot of work Emanuele Concone’s way. “His precision, attention to detail and critical eye for spotting the strengths and weaknesses of clients’ inventions make all the difference.”
Studio Legale Bird & Bird
“When it comes to intellectual property, Bird & Bird is one of the most active players in Europe. Its effective practitioners have been involved in the majority of Italy’s biggest patent cases and are highly respected by judges for the compelling way they present arguments. They are having a big impact and pushing the law forwards.” Helming the practice together, Giovanni Galimberti and Massimiliano Mostardini are among the most distinguished litigators around, but they also know how to sew up valuable licensing contracts. “Rights holders really appreciate the way Galimberti tailors his advice to their specific requirements; he always proposes solutions that best fit their business needs.” Mostardini is also “great at interacting with clients. Extremely proactive, he’s a pleasure to work with”. Their favoured theatres are pharmaceuticals and life sciences respectively.
Studio Legale Jacobacci & Associati
Jacobacci & Associati’s high-impact lawyers know all the enforcement tricks in the book. Fazed by nothing, they take to the courtroom with a spring in their step and put in stellar performances time and time again. Founding partner Fabrizio Jacobacci leads by example. He recently secured an outstanding resultfor Sun World International in patent infringement proceedings against Nava and Azienda Agricola Anastasia. Meanwhile, his teammate Barbara La Tella has been showing her legal sleight of hand enforcing valuable pharmaceutical patents. “She’s a very professional and committed lawyer who offers clear, concise advice.”
Studio Legale Sena e Tarchini
The “extremely well-established” Sena e Tarchini is “a leading Italian IP firm that has long been at the top of the tree” thanks to the likes of luminary Giuseppe Sena and heavyweight litigator Giancarlo Del Corno. There are not many practitioners who have comparable powers of recall to Sena; he can outline the key points of every major patent judgment in the country’s history on the spot. Corno’s sharpness shines through in each and every line he writes; he really knows how to decode elaborate legal concepts for lay people. Life sciences cases are a staple in his burgeoning workload.
Studio Legale Vanzetti e Associati
Vanzetti e Associati famously secured the first lower court decision in Italy on biotech inventions – but it is not one to rest on its laurels. Its indefatigable enforcement stars continue to come up with surprising new ways to fend off clients’ competitors in the courtroom. Giulio Enrico Sironi has been responsible for his fair share of landmark decisions. He is a superb litigator with the technical knowledge and equanimity to prevail in nail-biting cases. Labelled the “king of IP litigation” by peers, name partner Adriano Vanzetti bows to no one in terms of experience. His is a name everyone in the community knows – and respects.
Studio Torta SpA
Studio Torta has been on the scene since 1879, which shows in the distinction of its prosecution support; byzantine matters are clearly communicated in reports that make for easy – even pleasurable – reading in the C-suite and queries are responded to in a flash. Having offices in Milan, Rome, Bologna, Treviso and Rimini, it is particularly popular among small and medium-sized enterprises with operations spread across the country, but it has plenty of international votaries too. Managing partner Simone Bongiovanni is a reliable choice.
Trevisan & Cuonzo Avvocati
“Trevisan & Cuonzo Avvocati is among the top firms for assistance with pharmaceutical patents. Its lawyers possess excellent knowledge of the area, strong strategic vision and the ability to quickly get to grips with tricky technologies. They really provide premium support.” Based in Milan, co-founders Gabriel Cuonzo and Luca Trevisan form the backbone of the practice. Over the last 30 years they have developed deep litigation playbooks – to say the least. Cuonzo masters the minutiae of cases without ever losing sight of the big picture; Trevisan always comes to court “exceptionally well prepared” with several sound strategies up his sleeve. Heading up the Rome office, Vittorio Cerulli Irelli is another client favourite. “He has an excellent command of the English language and outstanding communication skills.” His fabulous patent practice is complemented by strong antitrust knowledge. Daniela Ampollini is a rising star in the Parma camp with a complete command of the issues surrounding plant breeders’ rights, an area of law that is growing by the day; interested parties should not be surprised if the line is busy when they call her – but the wait will be worth it.

Luminaries

Giorgio Floridia - Studio Legale Floridia
Mario Franzosi - Avvocati Associati Franzosi Dal Negro Setti
Giuseppe Sena - Studio Legale Sena e Tarchini
Adriano Vanzetti - Studio Legale Vanzetti e Associati

Individuals: transactions

Marco Consonni - Orsingher Ortu Avvocati Associati
Giovanni Galimberti - Studio Legale Bird & Bird
Cesare Galli - IP Law Galli
Giovanni Guglielmetti - Bonelli Erede Pappalardo
Massimiliano Mostardini - Studio Legale Bird & Bird
Roberto Valenti - DLA Piper Studio Legale Tributario Associato

Individuals: prosecution

Cristina Biggi - Bugnion SpA
Luciano Bosotti - Buzzi Notaro & Antonielli d’Oulx
Claudio Bottero - Porta, Checcacci & Associati SpA
Mario Botti - Botti & Ferrari srl
Olga Capasso - De Simone & Partners
Emanuele Concone - Società Italiana Brevetti SpA
Cristina Freyria Fava - Buzzi Notaro & Antonielli d’Oulx
Rinaldo Ferreccio - Botti & Ferrari srl
Claudio Germinario - Società Italiana Brevetti SpA
Fabrizio Minoja - Bianchetti Bracco Minoja
Micaela N Modiano - Modiano & Partners
Elisabetta Papa - Società Italiana Brevetti SpA
Daniele Giovanni Petraz - GLP Intellectual Property Office
Davide Luigi Petraz - GLP Intellectual Property Office
Roberto Pistolesi - Dragotti & Associati srl
Antonio Mario Pizzoli - Società Italiana Brevetti SpA
Alessandro Sanchini - Modiano & Partners

Individuals: litigation

Gabriel Cuonzo - Trevisan & Cuonzo Avvocati
Gualtiero Dragotti - DLA Piper Studio Legale Tributario Associato
Giovanni Galimberti - Studio Legale Bird & Bird
Cesare Galli - IP Law Galli
Giovanni Guglielmetti - Bonelli Erede Pappalardo
Luigi Mansani - Hogan Lovells Studio Legale
Massimiliano Mostardini - Studio Legale Bird & Bird
Luca Trevisan - Trevisan & Cuonzo Avvocati
Daniela Ampollini - Trevisan & Cuonzo Avvocati
Mariangela Bogni - IP Law Galli
Giovanni Francesco Casucci - Dentons
Vittorio Cerulli Irelli - Trevisan & Cuonzo Avvocati
Giancarlo Del Corno - Studio Legale Sena e Tarchini
Gian Paolo Di Santo - Pavia e Ansaldo
Giovanni Ghirardi - Hogan Lovells Studio Legale
Fabrizio Jacobacci - Studio Legale Jacobacci & Associati
Vincenzo Jandoli - Avvocati Associati Franzosi Dal Negro Setti
Laura Orlando - Herbert Smith Freehills LLP
Roberto Valenti - DLA Piper Studio Legale Tributario Associato
Tommaso Faelli - Bonelli Erede Pappalardo
Roberto A Jacchia - De Berti Jacchia Franchini Forlani Studio Legale
Barbara La Tella - Studio Legale Jacobacci & Associati
Luigi Manna - Martini Manna Avvocati
Elena Martini - Martini Manna Avvocati
Micaela N Modiano - Modiano & Partners
Monica Riva - Clifford Chance Studio Legale Associato
Giulio Enrico Sironi - Studio Legale Vanzetti e Associati
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Issue 91