Italy: Patent litigation

Injunctions at a glance

Q: How can patent owners best enforce their rights in your jurisdiction?

Patent owners in Italy may file a lawsuit against an alleged infringer and begin proceedings on the substance of the case. If certain requirements are satisfied, the patent owner may also request an urgent petition as a provisional remedy to seek a faster decision by a judge.

In some cases, the decision obtained on the petition must be confirmed in subsequent main proceedings. Further, requests for damages can be discussed only in the main proceedings, not in the urgent petition. In both kinds of action, the patent owner may request various decisions.

Q: Are mediation and arbitration realistic alternatives to litigation?

Mediation and arbitration are possible alternatives to litigation, but their use in Italy had previously been limited; however, recent legislative amendments aimed at shortening the average duration of a civil lawsuit have introduced some incentives for parties to start mediation either before or during the lawsuit to come to an agreement.

The more significant innovation is the exemption of certain taxes and fees connected with mediation, together with some fiscal incentives and tax credits on attorney’s fee and on any amount paid to the other party if an agreement is reached.

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?

Specialised sections in ordinary courts handle litigation regarding IP rights. These courts are spread evenly across the country, with one per region (with some exceptions, such as Lombardy, which has two), when all parties are Italian. Only 11 IP courts hear cross-border cases.

In the first instance, the patent cases are usually handled by individual judges, while a panel of judges hears the case at the appeal phase. In both instances, the judges usually appoint a technical expert for patent cases. The system makes no provision for juries.

Q: What level of expertise can litigants expect from courts?

In general, the judges appointed to specialised courts have reached a good level of expertise in IP matters. Some of those courts, particularly those geographically based in northern and central Italy, handle most IP rights cases, and their judges have a very high level of expertise.

Q: Are validity and infringement dealt with together in proceedings?

There is no ‘bifurcation’ in Italy. The assessment of the validity of the rights and the discussion regarding infringement are usually handled together in the same proceedings. They are definitely handled together in cases in which the defendant files its counterclaims in the same proceedings.

Exceptions to this general rule are possible, such as when the defendant files no counterclaims but starts a new proceeding before a different court. In those cases, both proceedings can be conducted independently from one another.

Article 120 of the Industrial Property Code states that an action for a declaration of non-infringement is also admissible for proceedings concerning industrial property. These are declarative actions aimed at obtaining a ruling regarding the non-existence of a violation of third-party rights.

Q: Who may represent parties engaged in a dispute?

The parties in a lawsuit must be represented by lawyers that are admitted to practise and are enrolled in the Italian Bar Association. If the judge appoints a technical expert, each party may appoint its own technical expert to discuss matters with the other party’s technical expert during the court’s technical expertise phase.

Q: To what extent is forum selection possible in your jurisdiction?

A distinction should be made between validity and infringement cases.

In validity cases, the place of jurisdiction is determined based on the place where the IP rights object of the proceedings is domiciled.

In infringement cases, as a general rule, the competent court is determined based on the registered office of the alleged infringer; however, in infringement cases, Italian law provides that the lawsuit can also be based in the jurisdiction where the infringing acts are carried out.

Q: To what extent is pretrial discovery permitted?

Pretrial discovery is not permitted, at least according to the common meaning given to the process; in other words, discovery on a counterparty’s premises with several people searching for any useful evidence to be used in a legal action is not permitted.

On the contrary, discovery is allowed on the basis of a decision taken by a judge, which is usually very circumstantial, to define in detail the extent of the discovery (ie, which apparatus, product or device should be discovered), together with related documentation. No extensions beyond the parameters defined by the judge are allowed.

A bailiff, usually accompanied by one or more technical experts appointed by the judge, leads the discovery procedure. The petitioner’s lawyers and IP consultants can follow the discovery procedure if explicitly permitted by the judge.

Recent modifications to the Industrial Property Code have been introduced to strengthen the principles of Directive (EU) 2016/943 on trade secrets. These changes are intended to protect defendants’ trade secrets so that the petitioner does not obtain an unfair advantage.

Q: To what extent is evidence written and oral at proceedings?

Most IP litigation cases in Italy occur in written form. Witness examination is allowed at the request of the party concerned and must be authorised by the judge according to the alleged relevance of the witnesses based on the documentary evidence filed.

According to the Code of Civil Procedure, the witness is heard only in relation to specific queries that have been previously submitted to the court and approved by the judge. During the deposition, the witness is not cross-examined, but the judge may seek clarification on a motion by itself or with input from any of the parties.

Q: What role, if any, can expert witnesses play?

Since the proceedings are mainly in written form, any of the parties may rely on written attachments to the briefs providing an affidavit or expert opinion regarding a particular matter under discussion. Once those attachments become part of the proceedings, any party may submit queries to be put to the experts during their possible appearance as witnesses in a hearing.

In most cases, the written expert opinion suffices, and there is no need for expert witnesses to testify during a hearing about IP rights; instead, during the court’s technical consultancy phase, especially if the IP right enforced is a patent, if needed the judge-appointed expert can meet the parties’ technical experts in order to discuss particular items, or to conduct tests or trials regarding the alleged infringing items, in dedicated informal meetings without lawyers present.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?

Article 52(3bis) of the Industrial Property Code explicitly refers to ‘equivalents’, stating that they should be taken into account to determine the scope of the claims and to transpose Article 69 of the European Patent Convention. The validity of the doctrine of equivalents has also been confirmed by several Supreme Court decisions.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

Typically, problems in the enforcement of biotechnology, business method or software patents do not arise. The main proceedings, depending on the complexity of the case, often take time owing to the duration of the technical consultancy phase.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

Italian courts are not bound by previous decisions taken in other cases in which similar issues have been discussed; however, if previous cases assume a certain relevance for the present case, a judge may choose to consider them anyway.

In practice, the courts are more familiar with considering previous decisions taken by the same specialised courts, because the judges of the same court are inclined to have the same line of thought.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

In general, a case before an Italian court is not usually influenced by the way in which other jurisdictions have dealt with similar cases; however, a distinction should be made between validity and infringement cases.

If a right has been declared invalid in another jurisdiction, this may affect the case under discussion in Italy. In addition, the jurisdiction itself may be an important consideration, since when assessing the validity of a right, Italian courts may be more inclined to consider the outcome of a case from other European jurisdictions with a similar approach to Italy.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

Any party may file a request for postponement of certain terms during the development of the proceedings; however, the request must be well reasoned.

Recently, considerable changes have been made to the Code of Civil Procedure to reduce the duration of lawsuits. Those changes have made it more difficult for any party to needlessly delay proceedings, since judges are disinclined to grant postponement or stay proceedings without well-substantiated grounds.

If the defendant succeeds in its attempt to delay the case, the plaintiff may try to demonstrate the bad faith of the defendant and request that the judge order the reimbursement of the costs or damages borne by the plaintiff owing to the delay caused by the defendant’s unfair behaviour.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

A provisional remedy is granted when there is danger in the delay and there is a prima facie case.

To prove that there is danger in the delay, the petitioner must prove that the activity of the alleged infringer will cause irreparable harm before a first-instance decision is issued.

To prove that there is a prima facie case, the petitioner must prove that the IP right that it is enforcing is a valid right and that there are good reasons to believe that the alleged infringer is infringing the right.

If the judge is convinced that these requirements are satisfied, the precautionary proceedings can go ahead, and they often end with the grant of a preliminary injunction.

In most cases the order is granted after the court has heard both parties. In exceptional cases, pertaining only to those in which a discovery procedure is requested without requesting other remedies, the order can be executed without first hearing the defendant in order to make the discovery action more effective.

Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?

Parties can expect to get a first-instance decision within around two years, on average. In the case of an urgent petition, proceedings can end in a few months.

In certain cases where, in the framework of an urgent petition, the judge believes that it is necessary to appoint a court technical expert to discuss matters with the parties’ technical experts, this usually takes the form of at least two technical briefs in written form and can, therefore, extend the duration of the proceedings.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

In most cases, litigants in Italy should generally budget for between €50,000 and €180,000, for the entire first instance, depending on the complexity of the case, including the technical consultancy phase and the development of the proceedings. The budget range should be considered an average, inclusive of attorney’s fees (both lawyers and IP consultants), as well as for disbursements related to the lawsuit.

The budget required to obtain a decision by a judge after the request of a provisional remedy generally ranges from €10,000 to €60,000, depending on the requests made in the petition, the complexity of the case and how the petition develops.

Q: To what extent are the winning party’s costs recoverable from the losing party?

The winning party can usually recover part of the costs of the lawsuit, which are reimbursed by the losing party. The judge decides the amount of the recoverable costs (including the attorney’s fees) and typically establishes an amount representing around 40% to 60% of the total costs.

Q: What remedies are available to a successful plaintiff?

The typical remedies available to a successful plaintiff are mainly a permanent injunction by which the judge orders:

• the infringer to stop manufacturing, importing and selling the infringing items;
• the withdrawal of all the infringing items distributed on the market; and
• the seizure of the infringing items found either on the infringer’s premises or possibly also those of any third party involved (eg, distributors or retail shops).

Other measures that are often included in a ruling are an order to pay the established amounts of damages awarded, and an order to publish (at the infringer’s expense) a summary of the decision in one or more national newspapers or magazines. The decision always contains fines or penalties provided for each day of delay in complying with those measures or for any subsequent violation.

Q: How are damages awards calculated?

Damages are calculated according to Article 125 of the Industrial Property Code. The criteria to evaluate the amount of the damages awarded can be a flat amount established on a case-by-case basis that is proportional to the damage suffered by the owner. This fee cannot be less than the amount of the royalties that the infringer should have paid under a commercial licence agreement between the parties.

In some cases, the damages awarded may be equal to the entirety of the profits made by the infringer that should be given back to the owner. For damages there is a statutory five-year period, after which they can no longer be requested.

Q: Under what circumstances will courts grant permanent injunctions?

To grant a permanent injunction, the enforced IP right must be already granted (ie, not a pending application). Besides this requirement, permanent injunctions are quite common in lawsuits on IP rights, where the judge can typically issue a ruling in which they order the infringer to stop any manufacture, sales, commercial offers, advertisements or imports of the items that have been found to infringe a valid IP right.

Q: Does the losing party at first instance have an automatic right of appeal?

The Code of Civil Procedure establishes different terms to lodge an appeal against a first-instance decision. These terms are established according to whether the first-instance ruling has been served on the other party. If the ruling has been served, the deadline for filing an appeal is 30 days from the service, which can be made by both parties. If the ruling is not served, the deadline for appeal is six months from the filing of the ruling with the registry.

Q: How long does it typically take for the appellate decision to be handed down?

Parties can expect to get a second-instance decision within about two years, on average, or perhaps sooner where the discussion is limited to only a few focused issues.

The decision of the judge given on an urgent petition can be appealed as well. The decision is reviewed by a three-judge panel assigned to the same court to which the judge responsible for the case belongs; in those cases, a decision will be taken in a couple of months.

Q: Is it possible to take cases beyond the second instance?

Yes. The second-instance decision may be challenged before the Supreme Court in Rome. Appeal to the Supreme Court can be made only on the grounds of legal mistakes. At this level, no technical topics can be discussed.

Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

Italian specialised courts have no particular reputation for being pro-patentee; rather, they try to give a patentee the possibility of enforcing their rights in an effective manner.

In general, if the enforced IP right is a patent, judges are inclined to follow the conclusion of the court’s technical experts. For this reason, it is hard to use the expression ‘pro-patentee’ for all cases, since it depends on the merits of the individual case.

There is a tendency on the part of the courts to offer the alleged infringer a reasonable certainty of its rights. To do this, the courts determine a field of protection of the IP rights that is fair for third parties.

Q: Are there other forums outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?

No. The only out-of-court instruments to assert patents in Italy are mediation and arbitration, where a panel of experts chosen by the parties handle the dispute and try to reach an extrajudicial settlement.

Q: In what circumstances do courts in your jurisdiction accommodate remote hearings, for example during pandemic-related lockdowns?

From the beginning of the covid-related emergency in March 2020, the government has issued many legislative acts containing temporary rules regarding measures to contain the pandemic. In the field of justice, the aim was to conduct safe proceedings, while avoiding excessive delays to pending proceedings.

In the past two years, most hearings took place remotely by videoconference or in written form only, according to which each party would submit a brief containing the arguments that would have been presented during in-person hearings.

Remote hearings, hearings in written form and in-person hearings in the presence of the court can still take place at the discretion of the court or judge. For this reason, while the most recent trend is to have in-person hearings in which the parties are present before the court, some remote hearings still remain.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

The IP enforcement system in Italy has been recognised as being very effective and able to guarantee IP owners’ rights.