Italy

Although the Italian economy is the focus of widespread concern at present, the country’s patent activity appears to be buoyant. There have been some prominent big-ticket pharmaceutical clashes this year and more may be on the horizon as the biosimilar wave hits IP courts. Another hot topic is the Unified Patent Court (UPC), which is still widely discussed among practitioners despite the thick fog of uncertainty surrounding its implementation. In November 2018 the Italian government approved a draft bill to amend the Industrial Property Code in order to accommodate unitary patent protection and the jurisdiction of the UPC. Italy stands to gain a lot from the new scheme; some say that if the United Kingdom’s participation is judged to be impossible due to the fact that the UPC is underpinned by the European Court of Justice, Milan may become the location of one of the three seats of the court’s central division, alongside Paris and Munich. Understandably, many in the Italian IP community regard such a prospect favourably. In other news, the market is also undergoing changes. International firms are gaining a greater market share at the expense of the more traditional, professor-led establishments and IP boutiques that previously characterised the Italian IP scene – a shift which is reflected in the rankings this year.

Firms: litigation

  • Hogan Lovells
  • IP Law Galli 
  • Studio Legale Bird & Bird
  • Trevisan & Cuonzo Avvocati
  • Avvocati Associati Franzosi Dal Negro Setti
  • BonelliErede
  • DLA Piper Studio Legale Tributario Associato
  • Herbert Smith Freehills LLP
  • Studio Legale Associato in affiliation with Simmons & Simmons LLP
  • Martini Manna Avvocati
  • Studio Legale Jacobacci & Associati

Firms: prosecution

Firms: transactions

  • BonelliErede
  • DLA Piper Studio Legale Tributario Associato
  • Herbert Smith Freehills LLP
  • Hogan Lovells
  • IP Law Galli 
  • Studio Legale Associato in affiliation with Simmons & Simmons LLP
  • Studio Legale Bird & Bird
  • Studio Legale Jacobacci & Associati

Avvocati Associati Franzosi Dal Negro Setti

Avvocati Associati Franzosi Dal Negro Setti is a “very traditional law firm with a great reputation”. Founded in 1963, the partnership offers outstanding IP litigation and transactional advice to a dedicated stable of clients. Founder Mario Franzosi is a legend on the Italian IP scene and the inventor of a range of high-profile litigation strategies, with the famous ‘Italian tornado’ and ‘Angora cat’ both owing their existence to him. One respondent states: “Even in his mid-80s he’s still active, working every day in court and staying on top of every detail. It’s absolutely astonishing.” Master strategist Vincenzo Jandoli is also highly regarded in the courtroom and the backroom.

Barzanò & Zanardo

Pragmatic, upfront and “extremely responsive”, IP boutique Barzanò & Zanardo pulls out all the stops for clients as a matter of course. With a blend of patent attorneys and attorneys at law housed in its seven Italian locations, the firm is perfectly placed to offer commercially astute counsel that hits both the legal and technical sweet spots. Giovanni Zanardo is the go-to man for prospective clients.

BonelliErede

BonelliErede excels at finely judged patent litigation and transactional support, as several giants in the pharmaceutical, food and beverage, and software sectors know. The partnership is routinely engaged by sophisticated life sciences clients seeking litigation advice steeped in the firm’s regulatory knowledge. Driving the practice forward is dual-threat Giovanni Guglielmetti, whose contentious and non-contentious counsel garners plaudits from all corners of the market. “He’s a great practitioner and a truly brilliant individual, who really gets to the root of issues,” states one colleague. “One of the best experts in patent law at the moment in Italy, he is very knowledgeable and a pleasure to work with.”

Botti & Ferrari srl 

The European and Italian patent agents at Botti & Ferrari cover all technical domains with equal panache from their offices in Milan, Brescia and Bologna. Offering the full spectrum of non-contentious services, the boutique specialises in refined patent drafting, freedom-to-operate opinions and post-grant procedures. Electronic engineer Mario Botti uses his watertight drafting skills to prepare patent applications with the future in mind. His partner Rinaldo Ferreccio focuses on pharmaceutical technologies and a wide range of chemistry fields, with outstanding results before the EPO.

Bugnion SpA

Competitors are well aware that Bugnion is an IP agency whose star is on the rise. The winner of the Global IP Awards’ inaugural Italian trademark firm of the year gong is strong on the patent side as well, with a sizeable stable of dedicated professionals ready to fulfil clients’ every IP need. European and Italian patent attorney Cristina Biggi manoeuvres expertly in the life sciences space – as the holder of a PhD in organic chemistry, her specialist knowledge is beyond doubt.

Buzzi Notaro & Antonielli d'Oulx

Buzzi Notaro & Antonielli d’Oulx is an inspired choice for companies seeking commercially astute, mistake-free and far-sighted patent strategy. High-tech matters are its forte, but the firm’s practitioners also cover life sciences matters with minimum difficulty. The partnership has an impressive foothold in Asia, with some distinguished Japanese and Chinese clients lodged firmly in its contact book. Electronic engineer of 40 years’ vintage Luciano Bosotti is viewed as “one of the fathers of the Italian patent attorney profession”. “He’s still very active and produces excellent work, one of the best patent agents in the country.” Cristina Freyria Fava is a chemistry, pharmaceuticals and biotech sage, whose theoretical knowledge has been enhanced by her spell as an in-house biomedical researcher.

DLA Piper Studio Legale Tributario Associato

DLA Piper is a familiar name in global intellectual property and a well-networked giant with the capacity to assert patent rights in a sizeable percentage of the world’s jurisdictions. From its offices in Milan and Rome, the team fulfils a trusted adviser role for many of its clients. DLA Piper’s practitioners are unusually attuned to the commercial imperatives that their patrons face, which is why innovative companies – including lifestyle brand Alpinestars, energy technologist Exergy and ski pole manufacturer SPM – continue to rely on it for Italian counsel. Litigator Gualtiero Dragotti holds the group together. His multi-jurisdictional reach and superb technical grounding in the life sciences sector make him a skilled litigator with a “deep knowledge of how to conduct complex disputes”. Roberto Valenti is also particularly prominent in this technical area. As one of the most ardent proponents of an Italian ‘patent box’ scheme, he is a guardian of long-term innovation in the country.

GLP Intellectual Property Office 

GLP is a firm which drafts as though every patent is about to be challenged. Complacency has no place in the patent attorney partnership, which is renowned for its flexibility, speed, effectiveness and international outlook. The firm also has a “practical attitude to business”, which is greatly appreciated by patrons seeking IP advice that makes commercial sense. Co-managing partners Daniele Giovanni Petraz and Davide Luigi Petraz steer the ship adroitly. Daniele joined the firm in 1997 after working as a patent engineer in Vienna and can deliver “great” patent strategy and firm management in Italian, English or German. Equally accomplished, Davide has a stunning mix of “solid experience, ability and managerial skills”; he also brings overseas IP experience to the table, having practised as a junior attorney in Washington DC early in his career.

Herbert Smith Freehills LLP

Global giant Herbert Smith Freehills operates in virtually all technical areas and jurisdictions; no matter is too complex, far reaching or niche for the firm’s combined might. Herbert Smith Freehills’ Italian office opened in Milan in January 2018 and has since gained a formidable reputation for contentious work of all stripes. Life sciences litigator Laura Orlando leads the team, having been persuaded to join from another top European outfit. She garners market plaudits with ease. “Laura has an encyclopaedic knowledge of the healthcare sector in Italy from a regulatory, as well as a pure IP, angle. Immensely responsive, she is always on hand to explain the Byzantine complexity of Italian law to outsiders. She is also great with clients and excels in cross-border instructions.” Of counsel Pietro Pouché has a taste for international arbitration, having honed his skills in China and the United States. His expertise crosses multiple sectors, making him a man for all seasons.

Hogan Lovells

“One of the most important firms” on the Italian landscape, Hogan Lovells has translated its global reach into a formidable fighting force which receives some of the most enviable life sciences and high-tech instructions in the land. The Milan office relies on the services of two extraordinary patent litigators. Giovanni Ghirardi is “smart, engaged and a very good practitioner – he understands both technical and legal issues implicitly”. His passion for cutting-edge technology spans multiple areas, including high-tech and medical devices. Versatile operator Luigi Mansani is both an esteemed university professor and a seasoned patent litigator. Described as “one of the top practitioners in Italy”, he is a pleasure to plead against according to one competitor.

IP Law Galli 

“One of the leading Italian litigation firms in all fields of technology,” IP Law Galli is an outfit that punches well above its weight when it comes to high-stakes patent disputes. The relatively small team takes instructions of monumental importance, especially in the high-tech and pharmaceutical arenas, with clients including Teva, LG and Astellas Pharma trusting the firm to deliver results. At the heart of the practice is Italian IP legend Cesare Galli. “He’s a top player: brilliant, strategically oriented, one of the best. His deep knowledge of all aspects of intellectual property in Italy and the EU is a treasure that can be relied upon.” Mariangela Bogni is an inspired choice for complex life sciences litigation, especially given the procedural knowledge that she possesses as a result of her PhD in IP law.

Jacobacci & Partners

Jacobacci & Partners is an IP stalwart that has been serving Italian clients with distinction since its foundation in 1872. With 13 partners spread across the same number of offices in four countries, the practice is well placed to meet clients across Europe on their home turf. The firm manages more than 80,000 patents in all technical fields and should be sought out for exemplary filing, prior art searches and post-grant EPO representation. Paolo Ernesto Crippa is the name to remember for prospective clients.

Martini Manna Avvocati

Martini Manna Avvocati makes matters clear for its clients. The partnership of attorneys at law has offices in Milan, Brescia and Vicenza, from which it dispenses commercially focused legal wisdom that leaves no room for doubt as to the best way forward. Elena Martini is an all-sector litigator and transactional specialist, described as being “skilled in drafting agreements and in negotiating with counterparts”. Co-founder Luigi Manna has worked at several top Italian firms over the course of his career. His practice straddles the contentious/non-contentious divide, focusing particularly on the IT sector.

Modiano & Partners

Modiano & Partners is an IP boutique with deeps roots in Germany, Italy and Switzerland. The group’s 50 patent attorneys combine with its lawyers to produce a bean-to-cup offering that keeps devotees coming back for more. Electrical, mechanical and electronic engineer Alessandro Sanchini is a patent attorney par excellence, with one collaborator stating: “He’s brilliant from a technical point of view, and has great experience as an expert in litigation cases.” Harvard and London-educated Micaela Modiano gives superb patent advice to her legions of loyal clients; “her performance is always outstanding,” according to one foreign associate.

Società Italiana Brevetti SpA

The patent attorneys at Società Italiana Brevetti seem to perform even better when faced with especially complex patent conundrums; supplementary protection certificates, plant breeders’ rights and multi-jurisdictional pharmaceutical litigation are all handled adroitly and with minimum fuss by the firm’s renowned practitioners. On the pharmaceutical side of the practice, Claudio Germinario and Elisabetta Papa ensure that quality never slips. Germinario is a premier Italian litigation support attorney and brings 20 years’ experience at the EPO in Munich to every brief that he examines. Described as “a genius, one of the biggest experts in biotechnology” by one peer, his quality is beyond doubt. Biomechanics buff Papa is “extremely practical” in her approach to drafting, filing and prosecuting cutting-edge patents. Mechanics and electronics maven Antonio Mario Pizzoli is a genuinely global practitioner who is as comfortable securing patent protection in the United States and Asia as he is in Europe. Emanuele Concone’s watertight drafting skills are put to good use by mechanics clients that require the very best.

Studio Legale Associato in affiliation with Simmons & Simmons LLP

Simmons & Simmons is a name that needs no introduction in the IP sphere. The globetrotting titan enjoys an extremely strong pan-European offering, which has been bolstered by its recent acquisition of a team of established Italian patent litigators. As always, clients can expect joined-up and technically outstanding service when they enlist the help of the Milan office. Stefania Bergia is “fantastic, in terms of quality”; having been labouring at the coalface for many years, she knows Italian patent law and procedure backwards. Her colleague Giulio Enrico Sironi also enjoys an impressive market reputation. “His capacity to understand and explain litigation proceedings is outstanding, and he has a great temperament,” reveals one peer. “He is very knowledgeable, creative, responsive and smart. Always punctual and diplomatic, he’s a genuine team player with a gift for languages: his English is perfect and his German is very good. Just an all-around nice person to work with.”

Studio Legale Bird & Bird

Bird & Bird has adopted a rare approach in Italy, deliberately housing attorneys at law with patent agents under one roof to produce counsel that is both legally and technically informed. The firm’s Milan and Rome offices are growing fast – a sure sign that clients appreciate the invaluable advice that stems from such a collaboration. Giovanni Galimberti and Massimiliano Mostardini are lynchpins of the practice. Galimberti is “extremely clever and proactive, with a modern approach” to litigation and transactional strategy across the pharmaceutical, mechanical, electronics, automotive and food industries. Mostardini is a life sciences supremo; equally at home in the courtroom and the boardroom, he is notably responsive and takes the time to delve beneath the surface of clients’ businesses. Senior associate Elisabetta Bandera has already amassed a wealth of pharmaceutical litigation experience and can be relied on for crystalline argument and rigorous fact-checking – no matter how high the stakes.

Studio Legale Jacobacci & Associati

Patent litigation comes naturally to Jacobacci & Associati. The firm advises clients all over the world in a dazzling array of technical sectors, producing commercially savvy counsel that translates into fantastic courtroom strategy. Turin-based founding partner Fabrizio Jacobacci continues to drive the firm forwards through his outstanding leadership and advocacy. Partner Barbara La Tella’s multidimensional IP practice is informed by her deep knowledge of wider commercial law.

Studio Torta SpA

An “established firm with a longstanding global network”, Studio Torta “offers solid technical support in a wide variety of fields”. The esteemed patent attorney partnership is spread across six Italian offices, enabling it to reach clients wherever they are based. Italian and European patent prosecution is a vocation for Studio Torta’s professionals, all of whom know how to shepherd applications past the most stubborn of gatekeepers. Simone Bongiovanni is the first point of contact for interested parties.

Trevisan & Cuonzo Avvocati

“It is the leading niche IP practice in Italy, always providing service of the highest standard.” “The best in the field, housing the toughest litigators in the Italian market.” These kinds of remarks are standard fare when other practitioners discuss technically adroit courtroom phenomenon Trevisan & Cuonzo Avvocati. The outfit has been winning cases since it set up shop in 1993 and continues to do so on behalf of an enviable stable of life sciences, high-tech and mechanical clients. Founding partners Luca Trevisan and Gabriel Cuonzo anchor the practice. Trevisan is a litigator of 30 years’ vintage whose extensive multi-jurisdictional record leaves clients in no doubt as to his technical versatility and quality. Cuonzo is considered to be “the lawyer to go to for complex Italian patent litigation” by many; in the words of one peer, he’s a “clever, tough and unusual competitor with a modern approach: subtle in his arguments and always in possession of a comprehensive view of the overall case”. “He’s powerful,” simply states another. Thorough and responsive, Vittorio Cerulli Irelli “will be one of the very, very best Italian litigators in a few years – he’s a rising star in the market and there are few people who possess his quality”. He is often found acting with distinction in high-profile SEP cases on behalf of major multinational clients. Daniela Ampollini heads up the firm’s Parma office. She has a glittering reputation in the IP transactional sphere, with one peer deeming her to be simply “excellent”.

Other recommended experts

Marco Benedetto of HOFFMANN EITLE drafts and files with consummate skill in a range of life sciences fields. His technical competence ranges from dairy products to dentistry. Cantaluppi & Partners’ Stefano Cantaluppi is a mechanical engineer and European patent attorney par excellence. “He’s really impressive – he sees portfolios from a technical and strategic perspective, and is great at building strategies that consider the client’s expectations and needs.” The fantastic Olga Capasso of De Simone and Partners is “one of the best patent agents in Italy” in the words of one leading practitioner. Giovanni Francesco Casucci of Dentons is a first-rate patent litigator who is “very familiar with the workings of various Italian patent courts and key judges”. “He is charming to work with, and a very thoughtful advocate.” Orsingher Ortu Avvocati Associati’s Marco Consonni has a true eye for detail; IP-rich agreements of all types are safe with him. Giancarlo Del Corno of Studio Legale Sena e Tarchini is a versatile litigator whose courtroom advocacy has been known to rescue the most imperilled of IP briefs. Luminary Giorgio Floridia founded the firm Studio Legale Floridia in 1984, after years spent as an industrial property judge in Milan. He has seen almost everything there is to see in the field. “Considering his broad expertise acquired over years of prosecuting life science patents, Bianchetti Bracco Minoja’s Fabrizio Minoja is the perfect complement to any pharmaceutical litigation team.” Dragotti & Associati’s incredibly business-friendly, organic chemist and patent attorney Roberto Pistolesi specialises in “conveying complex technical advice in a very simple way”. Clifford Chance’s Monica Riva is a “promising young lawyer” whose ability to coordinate joined-up litigation strategy never fails to impress. Giuseppe Sena of Studio Legale Sena e Tarchini is “an eminence”; he has forgotten more about intellectual property than most practitioners will ever know.

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 - BonelliErede
  • Luigi Mansani - Hogan Lovells
  • 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
  • Giovanni Ghirardi - Hogan Lovells
  • Vincenzo Jandoli - Avvocati Associati Franzosi Dal Negro Setti
  • Laura Orlando - Herbert Smith Freehills LLP
  • Giulio Enrico Sironi - Studio Legale Associato in affiliation with Simmons & Simmons LLP
  • Roberto Valenti - DLA Piper Studio Legale Tributario Associato
  • Elisabetta Bandera - Studio Legale Bird & Bird
  • Stefania Bergia - Studio Legale Associato in affiliation with Simmons & Simmons LLP
  • Fabrizio Jacobacci - Studio Legale Jacobacci & Associati
  • Barbara La Tella - Studio Legale Jacobacci & Associati
  • Luigi Manna - Martini Manna Avvocati
  • Elena Martini - Martini Manna Avvocati
  • Pietro Pouché - Herbert Smith Freehills LLP
  • Monica Riva - Clifford Chance Studio Legale Associato

Individuals: prosecution

Individuals: transactions

  • Daniela Ampollini - Trevisan & Cuonzo Avvocati
  • Marco Consonni - Orsingher Ortu Avvocati Associati
  • Giovanni Galimberti - Studio Legale Bird & Bird
  • Cesare Galli - IP Law Galli 
  • Giovanni Guglielmetti - BonelliErede
  • Massimiliano Mostardini - Studio Legale Bird & Bird
  • Roberto Valenti - DLA Piper Studio Legale Tributario Associato

Luminaries

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