Italy

As a result of the troubled economy, small to medium-sized patent owners have become less aggressive in their pursuit of infringers; instead of protracted litigation, many now opt for cost-efficient settlement. By contrast, industry heavyweights continue to invest in enforcement in a bid to shore up market share; in particular, significant cross-border conflicts in innovation-rich sectors – specifically life sciences – have been on the rise. Reflecting this trend, the historically dominant professor-led firms are gradually being eclipsed by international outfits with the necessary technical depth, resources and multi-jurisdictional capabilities to handle these types of dispute. However, several home-grown boutiques have ably kept pace with these developments, so players in this competitive marketplace must stay on their toes.

Firms: prosecution

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

Firms: transactions

H
Bonelli Erede Pappalardo
DLA Piper Italy
Hogan Lovells Studio Legale
Simmons & Simmons LLP
Studio Legale Bird & Bird
Studio Legale Jacobacci & Associati

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 Italy
Simmons & Simmons LLP
Studio Legale Jacobacci & Associati
Studio Legale Sena e Tarchini
Studio Legale Vanzetti e Associati
3
De Berti Jacchia Franchini Forlani Studio Legale
Martini Manna Avvocati
Avvocati Associati Franzosi Dal Negro Setti
For over half a century, Avvocati Associati Franzosi Dal Negro Setti has provided first-rate IP contentious and consultation services to domestic and foreign clients alike. Led by respected statesman Mario Franzosi, the team is particularly adept at handling high-stakes litigation with an international bent – partially thanks to its dedicated Chinese and Polish desks. Hailed as “a cerebral practitioner who inspires confidence”, fellow litigator Vincenzo Jandoli provides robust support in heated disputes. With outposts across Italy, Germany, France and Spain, BARDEHLE PAGENBERG casts a long shadow over the European IP landscape. It marries sophisticated pan-continental know-how with an intimate understanding of the local market to dazzling effect. Its custom-tailored teams of attorneys at law and patent attorneys can effortlessly handle the whole gamut of IP matters, from drawing up intricate applications and fending off infringers to juggling complex technology transfer agreements.
Barzanò & Zanardo
The skilled practitioners at Barzanò & Zanardo “are alert and always think one step ahead”. Seven offices throughout Italy ensure it can provide seamless nationwide coverage and lightning-fast turnaround times. Patent prosecution and bespoke guidance are its specialities, and it provides support in all the traditional technical fields, as well as in cutting-edge technologies. Giovanni Zanardo is the man to contact for those seeking assistance.
Bonelli Erede Pappalardo
“Bonelli Erede Pappalardo is one of the most important firms in Italy for several practice areas, including intellectual property. People choose the firm because it always provides clients with a high chance of success.” With over 20 years’ experience in patent litigation and transactions, the firm’s “responsive and proficient” lawyers perform adroitly in all Italian and European forums. Taking charge is the “knowledgeable and capable” Giovanni Guglielmetti, a “superb practitioner” whose “competence in resolving legal problems and ability to manage difficult situations with his leadership are both exemplary”. “He is a top-notch litigator and has a number of good patent litigation wins under his belt.” Able back-up comes from Tommaso Faelli, “a tough and well-prepared litigator”. Advanced technical nous and an outstanding track record in both national and European Patent Office (EPO) prosecution make Botti & Ferrari a reliable ally for start-ups and multinationals alike, as well as numerous public research entities. Several of its patent attorneys have previously been examiners at the EPO, while others – such as Mario Botti and Rinaldo Ferreccio – have frequently appeared before the courts as appointed technical experts. Botti is a dab hand at prosecuting European and US patent applications and is well versed in the field of electronic engineering. Ferreccico’s forte is medicinal chemistry; the polyglot excels at devising savvy solutions to pharmaceutical patent conundrums.
Bugnion SpA
With just shy of 27,000 patents, models and designs under its stewardship, Bugnion is one of the most prolific filers in Italy and Europe. It always adds value to its services through a cost-efficient approach that marries technical insight with rapid response times. Embodying this philosophy is Cristina Biggi, a dual-qualified patent attorney who is the first port of call for the prosecution and enforcement of chemical and biotechnology patents.
Buzzi Notaro & Antonielli d'Oulx
Buzzi Notaro & Antonielli d’Oulx has enjoyed spectacular growth since its inception in 1992; in that time the firm has earned a reputation for the astute prosecution and protection of patents across Italy’s major industries. For chemistry, genetics and biotechnology briefs, Cristina Freyria Fava is the name to note; her wide-ranging experience encompasses everything from the drafting of watertight applications to the provision of technical guidance in judicial proceedings. Luciano Bosotti’s practice covers the whole nine yards, but he attracts warmest praise for his agility in the courtroom.
De Berti Jacchia Franchini Forlani Studio Legale
Commercial outfit De Berti Jacchia Franchini Forlani often finds itself fighting the corners of major international conglomerates: the full-bodied IP team shines in multi-jurisdictional disputes. This is not least thanks to its offices in Brussels and Moscow, which keep the firm up to speed with the latest regional developments in the patent world. It has racked up a series of crucial wins in the pharmaceutical domain, which can principally be credited to founding partner Roberto Jacchia “a great patent attorney” who chairs both the IP and competition teams.
DLA Piper Italy
Over a relatively short timeframe, DLA Piper has managed to carve a solid niche on the Italian IP scene. “It understands what the client wants and can manage the workload in such a way that you can expend minimal effort while getting the results you need.” The group wins special plaudits for its sure handling of mission-critical cross-border patent disputes, as illustrated by its recent representation of protective racing gear manufacturer Alpinestars in a multi-jurisdictional suit that will affect the future of the whole industry. The “fair, honest and very knowledgeable” Gualtiero Dragotti is leading on this brief. “Especially strong in contentious patent issues”, he takes “a proactive attitude vis-à-vis the client’s business, which is always much appreciated”. He is supported by Roberto Valenti, “a prominent figure in the life sciences arena” who has recently got signatures on the bottom line of several key IP transactions. GLP’s “high level of patent knowledge and wide-ranging technical expertise instil confidence”. “Fast, efficient and flexible with costs”, the firm “has a very strong international network and is particularly impressive in the mechanical and chemical fields”. Its heft and might allow it to tackle patent applications by the truckload, but this never comes at the expense of quality. An esteemed litigator with a mastery of four languages, “Davide Luigi Petraz is a fine combination of education and experience, and has a solid understanding of the technical issues at hand". “Proactive and strong in pre-patenting strategy”, managing partner Daniele Giovanni Petraz “is really pragmatic and very open in his communications with clients”.
Hogan Lovells Studio Legale
Blending a sizeable international network with incisive local and technical know-how, Hogan Lovells offers a refined end-to-end service to a slew of A-list patent owners. Its IP team impresses across the industry spectrum – from life sciences to electronics and mechanics – and is especially attuned to the needs of multinationals. Giovanni Ghirardi and Luigi Mansani make a star duo when it comes to enforcing patent rights: “It’s not uncommon to see either one of them on the other side of large and significant cases – both are highly active and outstanding lawyers.” Ghirardi’s powerful oratorial skills have been put to good use defending Bristol-Myers Squibb over the last year, while Mansani is praised for his “superb international approach to disputes”. “All things considered, IP Law Galli is simply one of the best firms in the country.” This “leading Italian boutique” has a modern, innovative take on patent litigation, with a laser focus on achieving cost-effective results. The ensemble benefits hugely from Cesare Galli’s hands-on approach: “Galli leads a highly professional team and he himself is a force of nature. One of the most authoritative and influential figures of the Italian IP world, he is always able to find time for his clients and is very much focused on the practical objectives. His advice is unfailingly right and he is also amenable to take into account budget constraints.” His right hand is the adaptable Mariangela Bogni, who concentrates on pharmaceutical and mechanical patents. Together with Galli, she “provides an excellent service when it comes to pharmaceutical patent litigation”.
Jacobacci & Partners spa
With 13 offices and a phalanx of talented attorneys, lawyers and technicians on hand, Jacobacci & Partners is a prime pick for global rights holders. Deep bench strength and a customised approach allow it to assemble tailored teams to meet the specific needs of individual clients. Swift and price sensitive, the firm has turned patent prosecution into a refined art. Patent head Paolo Ernesto Crippa is the name for the address book.
Martini Manna Avvocati
The “terrific” practitioners at Martini Manna Avvocati are characterised by their business acumen, appreciation of budgetary constraints and flexibility in adapting to clients’ requests. This certainly rings true for Elena Martini and Luigi Manna, who are both versatile problem solvers. Martini possesses “excellent expertise in industrial designs” and has masterminded victories in several high-profile cases in her career. Electronics, medical devices and mechanical engineering are just some of the sectors that fall under the purview of Manna; however, the confluence of intellectual property and information technology is where he shines brightest.
Modiano & Partners
Modiano & Partners is well equipped to handle any patent issue thrown at it. Its sizeable squad of attorneys and technical experts is always at the ready, and offices in Milan, Lugano and Munich gift the crew with pan-European capabilities that are a cut above. For polished prosecution and shrewd advice, especially in the electronics and mechanics fields, look no further than Alessandro Sanchini. When things get heated, however, Micaela Modiano is the one to call: “If you are looking for a patent litigator, she can be found everywhere – she is active, tremendously talented and really knows her stuff.”
Simmons & Simmons LLP
Simmons & Simmons’ mantelpiece is adorned with awards for its work in the life sciences domain. A combination of deep industry experience and up-to-the-minute regulatory knowledge makes the firm an authority at the crossroads between pharmaceuticals and patents. However, it also “puts out a fantastic work product in the high-technology space”. Captaining the life sciences sector group and dispute resolution department, Laura Orlando has made winning a habit for pharmaceutical heavyweights such as GlaxoSmithKline and Eli Lilly. The “brilliant lawyer” is “both efficient and business oriented”.
Società Italiana Brevetti SpA
“Well-known, top-notch boutique” Società Italiana Brevetti has cultivated a wealth of insight in a number of specialist fields, including new technologies and plant breeders’ rights. It also has a unique grasp of supplementary protection certificates (SPC), a subject which is intimately familiar to Claudio Germinario. “Extremely knowledgeable, efficient and keen”, Germinario is “one hell of a chemist and a pleasure to work with”. “More than anybody else, he knows all about the ins and outs of EPO case law.” Emanuel Concone is likewise “extremely reliable for managing EPO oppositions and appeals”. “He is precise and meticulous, and flexible in accommodating last-minute requests without compromising on quality.” A member of the firm’s nano-bio team, Elisabetta Papa focuses on drafting and prosecuting nanotechnology patent applications. She also acts as an ex parte expert in patent litigation and “has an in-depth understanding of case law. She is incredibly good at solving issues between parties with competence, care and common sense". Another court expert in patent litigation, Antonio Mario Pizzoli rounds off the impressive troop; he also makes light work of protection in foreign jurisdictions, especially in Asia and the United States.
Studio Legale Bird & Bird
Benefiting from a robust international network and a brace of offices in Italy, Bird & Bird is “one of the largest and strongest IP firms in the country”. “It has performed extraordinarily in the patent and trademark realm over the years”, and “you often see it handling the most important cases." Massimiliano Mostardini and Giovanni Galimberti are both “excellent, experienced lawyers” and make for a feted double act. The founder of the Italian branch, Mostardini is a life sciences doyen who is “exceedingly smart”. “Galimberti is knowledgeable and incredibly experienced in patent litigation. His work will always be fair and of high quality.”
Studio Legale Jacobacci & Associati
“A major player on the market”, Jacobacci & Associati has a formidable presence in the IP domain, having been involved in many of the country’s most significant patent disputes. Part of the secret to its success lies in its rigorous internal training programme, which produces commercially and internationally perceptive lawyers who can fully unlock the potential of clients’ intangible rights. Fabrizio Jacobacci takes the reins of the IP department; the internationally renowned practitioner has had his plate full over the last year managing several headline-hitting litigations. Life sciences whizz Barbara La Tella is “extremely skilled in patent law. She combines her nuanced understanding of patents with very strategic thinking that goes far beyond just Italy – she has an impressive way of utilising Italian patent law in a wider European context”.
Studio Legale Sena e Tarchini
“Sena e Tarchini is one of the most important competitors when it comes to patents." The compact boutique has a long and illustrious history, and “its work quality today is still impeccable”. Giuseppe Sena is “an excellent and delightful practitioner” who “continues to operate at the top level. His knowledge of the law and the courts, as well as the legal environment as a whole, is a boon for clients.” Giancarlo Del Corno provides plenty of back-up in contentious spats: “He can rightfully be called a patent disputes specialist and is strong in the life sciences in particular.”
Studio Legale Vanzetti e Associati
Although most celebrated for its strength in soft intellectual property, Vanzetti e Associati is also an accomplished performer on the patent stage. “Although boutiques may no longer dominate the market as they once did, this firm is one of the few to continue to lead in reputation,” contends one peer; while another avers that “the firm remains an increasingly active competitor for patents”. Founder Adriano Vanzetti is “one of the forefathers of the IP scene in Italy”. Never overshadowed by the professor’s imposing presence, Giulio Enrico Sironi carries much of the firm’s weight in patent litigation: he is an “active and excellent” courtroom advocate.
Studio Torta SpA
As one of the nation’s oldest IP outfits, Studio Torta has garnered a wealth of experience in both patents and trademarks over the years. From cast-iron prosecution to on-point advice on enforcement, “it offers solid technical support in a wide variety of fields”. Close ties with the Italian patent office and the EPO means it always has its finger on the pulse of the latest developments at these agencies. Simone Bongiovanni is the principal point of contact.
Trevisan & Cuonzo Avvocati
“A dominating presence on the market for contentious work”, the “striking” Trevisan & Cuonzo is “quite simply the number one patent litigation shop in Italy”. “The level of service provided is outstanding,” enthuses one client. “Emails are answered quickly, the attorneys are up to speed on all details of matters at all times, the advice is very sound and there is an excellent balance between partner attention and the involvement of junior lawyers.” Name partners Luca Trevisan and Gabriel Cuonzo are the leading lights. “Trevisan is extremely knowledgeable and has considerable experience in patent litigation”, while the “internationally sensitive” Cuonzo is likewise “a tough litigator with a modern approach”. Vittorio Cerulli Irelli “has an aptitude for sensing the needs of his clients and subsequently providing the legal – and practical – solutions". With “a quick grasp of technical issues”, he “delivers an outstanding quality of work”. Daniella Ampollini provides further support in courtroom battles across a range of industries. “She is extremely knowledgeable and responsive, and provides commercially focused, practical advice that allows clients to successfully navigate the often difficult landscape of the Italian patent litigation system.”

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
Mario Traverso - Studio Legale Traverso
Roberto Valenti - DLA Piper Italy

Individuals: prosecution

Cristina Biggi - Bugnion SpA
Luciano Bosotti - Buzzi Notaro & Antonielli d'Oulx
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
Enrico Zanoli - Zanoli & Giavarini

Individuals: litigation

Gabriel Cuonzo - Trevisan & Cuonzo Avvocati
Gualtiero Dragotti - DLA Piper Italy
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
Daniella Ampollini - Trevisan & Cuonzo Avvocati
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
Laura Orlando - Simmons & Simmons LLP
Roberto Valenti - DLA Piper Italy
Mariangela Bogni - IP Law Galli
Claudio Bottero - Porta, Checcacci & Associati SpA
Tommaso Faelli - Bonelli Erede Pappalardo
Roberto A Jacchia - De Berti Jacchia Franchini Forlani Studio Legale
Vincenzo Jandoli - Avvocati Associati Franzosi Dal Negro Setti
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 87