Italy

The Italian patent scene is buzzing and the country’s practitioners have several reasons to be cheerful at present. The Unified Patent Court (UPC) is one of the hottest topics of the minute; and since the United Kingdom announced its withdrawal from the system, Milan is a prime candidate to take over from London as the location of one of the UPC’s three centralised courts, alongside Paris and Munich. If this change is implemented, Italy’s status as a patent hub will be significantly enhanced, creating new prospects for clients and firms alike. Another positive development is that, as of July 2020, innovators seeking to protect their inventions in Italy will be able to obtain protection directly via an international Patent Cooperation Treaty (PCT) application rather than going through the European patent system first – a change that should result in reduced time and costs. Another legal tweak which presents new opportunities is the Patent Box Decree – an initiative to slash tax on income for companies that use IP assets for R&D activities; this has just become more accessible thanks to the country’s new Growth Decree. Overall, change is in the air, which is also reflected in this year’s rankings: law firms are expanding their offerings to encompass prosecution, as the distinction between legal practices and traditional patent agencies is blurred even further.

Firms: litigation

  • Bird & Bird LLP
  • Hogan Lovells
  • IP LAW GALLI Srl 
  • Trevisan & Cuonzo
  • BonelliErede
  • DLA Piper
  • Herbert Smith Freehills LLP
  • Studio Legale Associato in affiliation with Simmons & Simmons LLP
  • Avvocati Associati Franzosi Dal Negro Setti
  • Martini Manna Avvocati
  • Nunziante Magrone

Firms: prosecution

Firms: transactions

  • Bird & Bird LLP
  • BonelliErede
  • DLA Piper
  • Herbert Smith Freehills LLP
  • Hogan Lovells
  • IP LAW GALLI Srl 
  • Nunziante Magrone
  • Studio Legale Associato in affiliation with Simmons & Simmons LLP

Avvocati Associati Franzosi Dal Negro Setti

A fixture on the nation’s IP landscape since 1963, Avvocati Associati Franzosi Dal Negro Setti is “a stellar address” for top-notch consultation and contentious services. The heartbeat of the practice is Mario Franzosi, a pre-eminent litigator who has blazed a trail for patent practitioners globally with his internationally acclaimed legal theories. He often links up with Vincenzo Jandoli, a business-minded strategist who never backs down from a courtroom battle.

Barzanò & Zanardo

“One of the best outfits for prosecution work in the country, Barzanò & Zanardo has a well-organised and seamless offering – especially in the electronics space.” It houses patent attorneys and attorneys at law who work together out of seven Italian bases to deliver holistic counsel that is always on point. Giovanni Zanardo is the key name for the address book.

Bird & Bird LLP

There is no firm quite like Bird & Bird on the Italian market. It combines an international footprint with the management style of a boutique and houses both attorneys at law and patent agents, operating as a true one-stop shop for those seeking comprehensive patent protection. Helming the IP unit are chairman Massimiliano Mostardini and managing partner Giovanni Galimberti. Regularly sought out for his resourceful approach, Mostardini draws on a well of knowledge accumulated over 30 years of practice to find solutions when none seem available. Working alongside the pharmaceutical ace, Galimberti showcases his commercial nous when devising impenetrable litigation strategies and executing them flawlessly. A mechanical and electronic specialist whose star is on the ascendant, Elisabetta Bandera provides a non-stone-unturned service that reassures clients on even the most convoluted of instructions. Recently elected to the partnership, Antonella De Gregori adds a unique dimension to the practice as a prosecution ace who has spent more than two decades opposing and defending patents before the EPO. She has an eagle eye for spotting potential pitfalls and making the optimal tactical moves.

BonelliErede

Each brief that is entrusted to BonelliErede is carefully handled by an expert in the relevant area of focus, ensuring that first-rate, bespoke solutions are devised as a matter of course. The outfit also recently joined forces with independent local law firm Lombardi e Associati, in a move which has seen the addition of 70 experts to its team sheet. When faced with challenging conundrums in enforcement and licensing scenarios, Giovanni Guglielmetti keeps his cool and asks the right questions in order to arrive at the optimal strategy. His approach is appreciated by industry leaders in the pharmaceutical, telecommunications and automotive sectors time and time again.

Botti & Ferrari srl 

“Responsive, reliable and great to work with”, Botti & Ferrari has won itself many fans. The squad ably dispatches mandates involving everything from patent drafting to validity and infringement opinions; two members have held positions as substantive examiners at the EPO, while other stalwarts – such as Mario Botti and Rinaldo Ferreccio – have served as court-appointed technical counsel. Electronic engineer Botti is often relied upon for his wise technical support in hard-hitting litigation; while Ferreccio’s mastery of medicinal chemistry makes him a favourite among those in the life sciences.

Bugnion SpA

With 13 desks in Italy and a further three branches in Alicante, Munich and Los Angeles, Bugnion is a premier destination for domestic and international corporations seeking ironclad protection for their most valuable assets. Milan-based Cristina Biggi stands out among a star-studded line-up. Having stepped up to the plate before the Italian PTO, EPO and WIPO, and earned a PhD in organic chemistry, Biggi offers invaluable expertise to pharmaceutical giants with complex prosecution and enforcement needs.

Buzzi Notaro & Antonielli d’Oulx

This technically astute set covers a diverse range of industries, but truly shines in the electronic engineering space, thanks to the brainpower and elbow grease of Luciano Bosotti and Tassilo Meindl. Esteemed patent attorney Bosotti has been providing a meticulous service to clients for more than 40 years, with uncommon singlemindedness. IAM Patent 1000 newcomer Meindl is a font of knowledge on data fusion and intelligent sensor devices, having authored several publications on these subjects. When loose ends need tying up in the mechanical sector, Giancarlo Notaro capitalises on over two decades of experience to deliver crisp results. Bringing compelling life sciences capabilities to the table is Cristina Freyria Fava, a former researcher at a biomedical company who knows how to build rapport with budding scientists and inventors.

DLA Piper

The Italian outpost of DLA Piper combines the global reach of an international titan with the attentive, tailored approach of a boutique – a formula that keeps clients coming back for more. The firm staunchly enforces the rights of industry leaders such as Nikon, Alpinestars and ski-pole manufacturer SPM, at both a local and international level. Spearheading these efforts is the indomitable Gualtiero Dragotti, who coordinates multi-jurisdictional disputes with finesse and is often called upon by government bodies to advise on IP-related initiatives in his capacity as president of the International Association for the Protection of Intellectual Property. Co-chairing the practice, Roberto Valenti has been busy fighting the corner of major players in the pharmaceutical sector and getting signatures on the bottom line of lucrative deals. The firm boosted its life sciences practice with the addition of Marco de Morpurgo, a regulatory whizz who knows the lie of the land and helps companies to navigate legal complexities across Europe.

GLP Intellectual Property Office 

“Blending a fantastic array of technical skills with a refined commercial skillset, GLP has a business-oriented and pragmatic approach that is appreciated by a long list of stable clients.” The ensemble assists inventors from the initial stages of ideation through to creation and monetisation, ensuring that the patents it drafts are fully aligned with future targets. Managing partners Daniele Giovanni Petraz and Davide Luigi Petraz have a command of five languages between them – a boon to patrons with international interests. Building up strong portfolios is one of Daniele’s specialities; while Davide provides 360-degree support as a qualified European and Italian patent attorney as well as an attorney at law.

Herbert Smith Freehills LLP

A heavy hitter in the life sciences arena, Herbert Smith Freehills has had a banner year representing some of the biggest names in the industry in international disputes. “The team is uniquely placed – most of its lawyers have additional scientific qualifications, which enables them to produce advice that is legally and technically excellent. They perform outstandingly before domestic courts and excel at devising global strategies.” They have lately acted on behalf of Gilead in five simultaneous cases; managed pan-European defence proceedings for Takeda Pharmaceutical Company; and brought out the big guns for GlaxoSmithKline on a case in which important questions on supplementary protection certificates were raised. Taking a lead on all three is IP department chief, Laura Orlando: “You can trust her with the most complex of briefs – she is a litigation superstar with a modern approach. She also knows how to safeguard assets that are under development as well as new product launches, making sure that the protection doesn’t put the brakes on important commercial collaborations with business partners. Her skill for cutting through the fine print and coming up with sensible and effective solutions displays incredible commercial acumen.” Orlando works closely with Sara Balice, who brings additional firepower to the frontlines. Having been seconded to the biotechnology transfer department at a leading research centre in Milan, she brings unique insight in the field to the courtroom. The firm has also been racking up victories in the industrial machinery and steel industries, thanks to nimble performances from of counsel Pietro Pouché. Valpres, a leading producer of cast iron ball valves, and global construction juggernaut JCB have the ear of this versatile practitioner.

Hogan Lovells

With over 400 IP professionals flying the Hogan Lovells flag worldwide, the firm’s cross-border capabilities are limitless. The Italian troop judiciously draws on the firm’s international network of contacts and deep banks of local experience to prevail in bet-the-company skirmishes. “The practitioners are extremely reliable and work harmoniously with external technical counsel to provide all-encompassing support. Undoubtedly, they are one of the best for litigation in the country.” In Giovanni Ghirardi and Luigi Mansani, the firm have a pair of truly outstanding courtroom advocates “who look to delve into the nitty-gritty of each case”. Always on-beat with trends at the cutting edge, the tech-savvy Ghirardi thrives in suits involving the hottest topics. From contributory infringement to compulsory licences and FRAND disputes, he acts on matters that result in precedent-setting decisions. In a similar vein, Mansani is a big-picture thinker who marries hands-on know-how with academic prowess. A highly respected figure in the field, he is fluent in technologies across many industries.

IP LAW GALLI Srl 

“A firm with no weaknesses, IP Law Galli is the best choice for life sciences litigation.” The super-specialised and compact boutique has a sterling market reputation and is always at the forefront of developments in patent law and policy. It is frequently engaged on the highest-stakes, most complex disputes going and never wavers under fire, as lately evidenced by Cesare Galli and Mariangela Bogni’s doughty representation of EG Pharmaceuticals in proceedings brought by Novartis. Firm founder and thought leader Galli “is boundless in his knowledge of the law and is without a doubt the best litigator in the country. You would be hard pressed to find a better fighter in court, who explains the intricacies of the proceedings with greater precision and in a clearer way”. Together with Bogni, who holds a PhD in IP law, he duked it out before the Supreme Court on behalf of Artsana to secure a landmark ruling in the field of medical devices.

Jacobacci & Partners

A stalwart of the Italian legal landscape, Jacobacci & Partners has had its roots embedded in the IP scene since 1872. Since then, it has grown to manage over 100,000 patents across myriad industries. The impressive statistics don’t stop there: the set safeguards the interests of 10,000 clients out of 14 locations, including Paris and Alicante and corresponding desks in Russia and Latin America. Each practitioner is unfalteringly committed to serving up the highest level of patent protection, whether on a local or international scale. Paolo Ernesto Crippa is the first port of call for innovators.

Martini Manna Avvocati

Technology-oriented outfit Martini Manna Avvocati is not the type to stick to the status quo – the ensemble loves nothing more than coming up with leftfield, forward-thinking solutions that achieve superb outcomes. Working around the clock to enforce patents and fight infringement fires are dynamic duo Elena Martini and Luigi Manna, who invariably keep clients’ objectives at the forefront of their minds. From skirmishes in the life sciences industry to conflicts in the technology sector, Martini acquits herself with distinction in the courtroom, regardless of the arena. When it comes to complex disputes with significant commercial ramifications, IT maestro Manna is a safe pair of hands.

Modiano & Partners

At Modiano & Partners, over 100 specialised IP practitioners come together to deploy sophisticated, joined-up counsel. Based in Germany, Italy and Switzerland, its patent agents and attorneys at law are perfectly positioned to advise on pan-European matters in a streamlined and efficient way. “When it comes to prosecuting applications in the electronics and mechanical industries, Alessandro Sanchini is brilliant.” Harvard-educated chemist Micaela Modiano is “a wise, diligent and bright practitioner who gives others a run for their money in the pharmaceutical sector”.

Nunziante Magrone

Full-service firm Nunziante Magrone breaks into the IAM Patent 1000 this year courtesy of its diverse bench, sparkling performances in court and willingness to go the distance for each and every one of its clients. One of its founding partners and IP division captains, Niccolò Ferretti receives warm plaudits from the market: “He has excellent knowledge of the challenges faced by businesses in the pharmaceutical space as well as a grasp of the complexities and nuances of the industry as a whole. Dynamic and reliable, Niccolò is the complete package.”

Società Italiana Brevetti SpA

Società Italiana Brevetti is never one to shy away from uncharted waters: its patent attorneys have an abundance of knowledge and expertise in even the most arcane and demanding of sectors. A major draw for clients is the diverse first-hand experience of its agents, many of whom have previously held prominent industry positions or sat as examiners and board of appeal members at the EPO. Having spent two decades as both a biotechnology examiner and board of appeal member in Munich, Claudio Germinario “knows the case law inside out and brings invaluable technical insight to the table”. Another name on the pharmaceutical side of the practice is Elisabetta Papa: “Incredibly bright, she demonstrates an encyclopaedic knowledge of intellectual property that holds up in proceedings before the EPO. She impresses with the complexity of her arguments and stuns the opposition with her meticulous pleadings, leaving no room for a counterargument.” “In the mechanics field, Emanuele Concone “achieves fantastic results and always proposes several solutions to the issue at hand. The protection he provides is holistic, which comes from a refined understanding of his clients’ needs”. Electronics and nanotechnology are the metiers of Gaetano Barbaro and Giuseppe Romano respectively. The IAM Patent 1000 debutants “excel in the art of strategy and consistently deliver strong results. Their work is in line with business objectives and looks to improve the overall portfolio and fosters the company’s IP strategy as a whole”.

Studio Legale Associato in affiliation with Simmons & Simmons LLP

The Italian bureau of global IP giant Simmons & Simmons has continued to go from strength to strength since bringing Giulio Enrico Sironi and Stefania Bergia on board two years ago. In large part thanks to the efforts of these “committed, knowledgeable and creative” practitioners, it has quickly become a must-hire for big-ticket, pan-European patent litigation in the healthcare and life sciences sectors. The pair “invest a lot of time in their clients and always respond in a timely fashion”, collaborating closely to develop arguments that hit the right note with judges and can secure victories for industry leaders. “Both are simply great to work with.”

Studio Torta SpA

“Thanks to its fantastic mix of professionals from varying technical backgrounds, Studio Torta always has the right patent attorney for the job.” The team comprises 34 European patent gurus, 34 IT wizards and eight technically astute specialists, all of whom have seen over 700 European patents through to grant and top the charts when it comes to PCT applications. “They grapple with complex matters quickly and are able to translate that information to clients in a way that is easy to understand. To top it off, they also provide insights on how to realise a patent’s fullest potential and help companies develop long-term strategic plans to reflect that.” Operating out of Turin, electrical engineering pro Simone Bongiovanni is a favourite among those with strong ties to Asia. “He has an incredible success rate and manages any questions that crop up quickly and effectively.” Former EPO examiner Mauro Eccetto can finesse a portfolio in English, French or German and makes light work of patenting conundrums in the food and beverage industry. Mechanical engineering virtuosos Luigi Franzolin and Fabio D’Angelo round out the team. “Franzolin produces excellent results and his responsive, practical and efficient manner makes him a pleasure to work with. D’Angelo has a strategic mind, which culminates in advice that is not only meaningful from a business standpoint, but also highly effective in terms of strategy. He delivers the most intricate of opinions with clarity and precision.”

Trevisan & Cuonzo

“Trevisan & Cuonzo comes highly recommended for their dynamic approach to patent litigation. The unit combines accuracy with creativity and is always responsive to client needs while remaining totally transparent on costs.” The firm would not be where it is today without influential co-founders Luca Trevisan and Gabriel Cuonzo. “One of the best lawyers in Italy, Trevisan thinks outside of the box and understands the mentality of his opponents, which – when coupled with his tenacity in the courtroom – brings excellent results.” “Cuonzo has immense knowledge of the pharmaceutical industry and devises top-notch strategies that ensure patrons feel completely supported at all times.” Another battle-hardened litigator, Vittorio Cerulli Irelli has emerged victorious in numerous standard essential patent disputes and frequently assists the High Court of England and Wales with his expert opinions on Italian law. Versatile operator Daniela Ampollini guides clients through choppy waters with a deft hand, helping to maximise the return on their investments through lucrative licensing deals.

Other recommended experts

Based at HOFFMANN EITLE, Marco Benedetto drafts meticulous Italian, PCT and European applications and his technical opinions are as crisp as they go. Cantaluppi & Partners’ Stefano Cantaluppi capitalises on over four decades in the patent field and a mastery of four languages to provide invaluable expertise on mechanical briefs. “A leading light in the field of biology”, Olga Capasso brings 12 years of experience as a patent attorney in Italy and the United States to the table. She can be found at De Simone & Partners. Spearheading the IP department at Dentons and co-heading its European patent litigation group, Giovanni Francesco Casucci ranks among the Italian IP elite. “A charming, thoughtful and gracious advocate, Giovanni knows the ins and outs of the local courts and advises on appropriate strategies perfectly.” Whether litigating complex cybersecurity suits or negotiating software licencing agreements, Gianluca De Cristofaro provides a superior service. The “proactive attorney with a fresh approach” operates out of LCA Studio Legale. A key driver of Studio Legale Jacobacci & Associati’s success is seasoned litigator and arbitrator Fabrizio Jacobacci – he knows when to turn the heat up and when to settle. Also based at Studio Legale Jacobacci & Associati, Barbara La Tella melds her regulatory and pharmaceutical knowledge to dish out on-point and technically sound advice. CEO of Dragotti & Associati, Roberto Pistolesi is a life sciences mastermind who can translate complex technical fine print into resonant commercial language. Recently swapping Società Italiana Brevetti for Notarbartolo & Gervasi, electronic engineer Antonio Mario Pizzoli is a frequent face before the EPO, where he chalks up one success story after another. Savvy litigator Monica Riva knocks it out of the park regardless of which industry arena she fights in. She receives instructions at Legance Avvocati Associati.

Individuals: litigation

  • Gabriel Cuonzo - Trevisan & Cuonzo
  • Gualtiero Dragotti - DLA Piper
  • Giovanni Galimberti - Bird & Bird LLP
  • Cesare Galli - IP LAW GALLI Srl 
  • Giovanni Guglielmetti - BonelliErede
  • Luigi Mansani - Hogan Lovells
  • Massimiliano Mostardini - Bird & Bird LLP
  • Luca Trevisan - Trevisan & Cuonzo
  • Daniela Ampollini - Trevisan & Cuonzo
  • Mariangela Bogni - IP LAW GALLI Srl
  • Giovanni Francesco Casucci - Dentons
  • Vittorio Cerulli Irelli - Trevisan & Cuonzo
  • Giovanni Ghirardi - Hogan Lovells
  • Laura Orlando - Herbert Smith Freehills LLP
  • Giulio Enrico Sironi - Studio Legale Associato in affiliation with Simmons & Simmons LLP
  • Roberto Valenti - DLA Piper
  • Sara Balice - Herbert Smith Freehills LLP
  • Elisabetta Bandera - Bird & Bird LLP
  • Stefania Bergia - Studio Legale Associato in affiliation with Simmons & Simmons LLP
  • Gianluca De Cristofaro - LCA Studio Legale
  • Niccolò Ferretti - Nunziante Magrone
  • Fabrizio Jacobacci - Studio Legale Jacobacci & Associati
  • 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
  • Marco de Morpurgo - DLA Piper
  • Pietro Pouché - Herbert Smith Freehills LLP
  • Monica Riva - Legance – Avvocati Associati 

Individuals: prosecution

  • Gaetano Barbaro - Società Italiana Brevetti SpA
  • Marco Benedetto - HOFFMANN EITLE
  • Cristina Biggi - Bugnion SpA
  • Simone Bongiovanni - Studio Torta SpA
  • Luciano Bosotti - Buzzi Notaro & Antonielli d’Oulx
  • Mario Botti - Botti & Ferrari srl 
  • Stefano Cantaluppi - Cantaluppi & Partners
  • Olga Capasso - De Simone & Partners
  • Emanuele Concone - Società Italiana Brevetti SpA
  • Fabio D'Angelo - Studio Torta SpA
  • Antonella De Gregori - Bird & Bird LLP
  • Mauro Eccetto - Studio Torta SpA
  • Cristina Freyria Fava - Buzzi Notaro & Antonielli d’Oulx
  • Rinaldo Ferreccio - Botti & Ferrari srl 
  • Luigi Franzolin - Studio Torta SpA
  • Claudio Germinario - Società Italiana Brevetti SpA
  • Tassilo Meindl - Buzzi Notaro & Antonielli d’Oulx
  • Micaela N Modiano - Modiano & Partners
  • Giancarlo Notaro - Buzzi Notaro & Antonielli d’Oulx
  • 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 - Notarbartolo & Gervasi
  • Giuseppe Romano - Società Italiana Brevetti SpA
  • Alessandro Sanchini - Modiano & Partners

Individuals: transactions

  • Daniela Ampollini - Trevisan & Cuonzo
  • Gianluca De Cristofaro - LCA Studio Legale
  • Giovanni Galimberti - Bird & Bird LLP
  • Cesare Galli - IP LAW GALLI Srl 
  • Giovanni Guglielmetti - BonelliErede
  • Massimiliano Mostardini - Bird & Bird LLP
  • Pietro Pouché - Herbert Smith Freehills LLP
  • Roberto Valenti - DLA Piper

Luminaries

  • Mario Franzosi - Avvocati Associati Franzosi Dal Negro Setti