Establishing the Business Courts for intellectual property

From specialised divisions to the Business Courts
In 2003 Italy set up specialised IP divisions at 12 Italian courts: Turin, Milan, Genoa, Venice, Trieste, Bologna, Florence, Rome, Naples, Bari, Palermo and Catania. All cases dealing with patents, trademarks and copyright were to be referred to these specialised divisions rather than the regular courts. The idea was to reduce the lengthy duration of IP cases. Although this objective was only partially achieved – IP cases in Italy take still longer than those in most neighbouring countries – the reform was well received, since IP cases are now decided by competent and specialised judges.

Things are now set to change again. Within the framework of a package of measures introduced to tackle the economic crisis (Legislative Decree 1/2012), the new Italian government has introduced the Business Courts, which will replace the specialised divisions. The new Business Courts will be located within the 12 courts which already have specialised divisions, but their mandate will be much broader. In addition to patents, trademarks and copyright, the Business Courts will deal with:

• Class actions (introduced in Italy by a 2005 law).
• Controversies between shareholders or managers of joint stock companies.
• Actions filed by creditors against managers that are personally liable for their claims, or against parent companies of a defaulting debtor entity.
• Cases regarding the enforcement of certain contracts to supply to government bodies.

Controversies
Although new Minister of Justice Paola Severino claims that the new Business Courts will be a crucial step in reducing the excessive duration of cases involving companies, particularly large corporations, doubts have been raised. Theoretically, the new law is in force and should apply to all cases filed after 26th April 2012. In fact, practical measures are needed in order for the Business Courts to begin work. The government decree makes the provisions immediately effective, but they may be repealed if Parliament fails to confirm them within 60 days of publication (ie, by 25th March 2012).

In fact, on 3rd February 2012 a preliminary vote of the Senate Justice Committee rejected the section of the decree on the new Business Courts and recommended certain changes. In particular, the committee objected to the presence of the Business Courts in only 12 Italian cities and expressed concern that courts without a specialised business division may be seen as "second rate" in future.

However, although the government may reconsider the location of the Business Courts, it appears committed to the general idea.

Costs 
Lawyers in general, and IP professionals in particular, strongly object to one provision of the new law, which requires parties in actions before the new Business Courts to pay four times the fees paid in normal court cases. The idea behind this is to discourage “futile” actions; the fee is also based on the premise that the new tribunals will be the courts of choice for large corporations.

However, IP professionals have objected that the Business Courts will also be the exclusive forum for all patent, trademark and copyright cases, in which the parties are not necessarily large (and presumably rich) corporations. The law may thus discourage small businesses and individual rights holders from protecting their rights in court.

Pharmaceutical patents
The new law includes other significant provisions for intellectual property. In particular, it eliminates Article 1bis of Section 68 of the Code of Industrial Property, which was introduced in 2010. Article 1bis was intended to clarify whether a patent protecting a pharmaceutical product is infringed by the mere fact of asking the authorities for authorisation to sell its generic counterpart in Italy, without any actual sale. Different courts had different interpretations, with the Court of Rome finding that such action constituted infringement and the Court of Milan that it did not constitute infringement. Article 1bis states that a request  for such authorisation does not constitute infringement only if it is filed within the year before the expiration of the patent. Perhaps, in a law dealing with liberalisation, the government intended to make the request for authorisation always permissible. However, legal scholars caution that the opposite may be the case: in the absence of a legal provision clarifying the matter, the general principles of the Code of Industrial Property may lead courts to conclude that the filing of such a request should always be regarded as infringement. 

Other provisions
In the area of copyright, the representation of collective interests of copyright holders in the field of music and videos is being deregulated. The specialist government agency, the Society of Authors and Publishers, will maintain its role; however, other agencies representing, among others, the owners of musical recordings may no longer operate as de facto monopolies, but will become open to competition.

Another provision, recommended to Italy by the European Union, allows IP consultants registered as such in other EU countries to be automatically registered provisionally or permanently in the Italian Register of IP Consultants, which is a prerequisite in order to practise their profession lawfully in Italy.