28 Oct
2014

Italy

What options are open to a patent owner seeking to enforce its rights in your jurisdiction?

In urgent cases the following preliminary remedies are available to patent owners:

  • seizure – an order to seize products, tools and production plants, accounts and invoices and advertising materials;
  • disclosure – an order to allow the inspection of products, production plants, accounts, advertising material and any associated documents in order to collect documentary evidence of the infringement and the extent thereof; and
  • injunction – an order to halt the manufacture, trade and use of the infringing items or to remove the infringing items from the marketplace.

In order to seek compensation for damages caused by the infringement, the patent owner should start proceedings on the merits.

Are parties obliged to undertake mediation/arbitration prior to bringing a case before the courts? Is this a realistic alternative to litigation?

Parties are not obliged to undertake mediation or arbitration before bringing a case before the courts. However, mediation is available as a possible alternative to litigation.

Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?

In Italy, IP civil litigation is handled by specialised courts, which have exclusive jurisdiction over IP matters (as well as company law and a few other areas). The number of specialised courts has been increased from 12 (Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste and Venice) to 22 (new specialised courts have been created in L’Aquila, Ancona, Bolzano, Brescia, Catanzaro, Campobasso, Cagliari, Perugia, Potenza, Trento and Bolzano), pursuant to DL 24 1 2012 n1. The judges have no specific technical backgrounds, but may appoint experts to deal with technical issues during trial. In addition, each party may appoint a technical expert, who can exchange both oral and written opinions with the judge’s expert. Therefore a patent owner can expect a high level of expertise from the Italian IP courts.

Are validity and infringement dealt with together, or does your country have a bifurcated system?

Patent validity and infringement issues can be – and usually are – handled together in the same proceeding before the same court. In both infringement and invalidity proceedings, technical issues are dealt with by the court-appointed expert.

Who may represent parties engaged in a dispute?

Only lawyers admitted to practise and enrolled in the Italian Bar Association can represent parties in an Italian dispute. The parties must grant a written power of attorney. In general, in patent litigation the parties designate a lawyer and, if the judge appoints an expert witness, also an expert specialising in the relevant technical field to liaise with the official expert

To what extent is pre-trial discovery permitted in cases?

Pre-trial discovery is not permitted. The Italian legal system does not provide for discovery in the common law sense. Pursuant to Article 129 of the IP Code, the patent holder can claim disclosure as a pre-trial measure. This allows the patent holder access to the infringer’s premises, production facilities, warehouses and/or accounts in order to inspect the infringing items, as well as the means used to manufacture them, evidence as to the alleged violation and the extent thereof. If summoning the infringer before the court may prejudice enforcement of the order, the measure may be granted ex parte. When disclosure is granted before the start of the case on the merits, the judge’s order shall also fix a mandatory time limit (no more than 20 working days or 31 calendar days – whichever is longer) for commencement of the case on merits. The order becomes ineffective if it is not enforced within 30 days or if the case on the merits is not filed within the fixed deadline. Usually the court allows the applicant to participate in the enforcement activities and appoint its own technical expert.

Is cross-examination of witnesses allowed during court proceedings? If so, what form does this take?

In Italy, patent cases are largely based on written evidence. Witness examination is permitted at the request of the interested party and is authorised by the judge on a case-by-case basis. Witnesses can be heard only in relation to specific queries previously submitted and approved by the court, subject to evaluation of the relevance and admissibility of those queries. The witnesses are not cross-examined, but the court may ask them to provide further clarification in respect of the circumstances on which the relevant queries are based in addition to the submitted queries.

What use of expert witnesses is permitted?

Expert opinions are frequently filed by parties in order to support their technical arguments. There are no restrictions regarding the use of expert evidence. In patent cases the experts appointed by the parties participate actively by filing the relevant technical briefs and documents with the court-appointed expert.

Is the doctrine of equivalents applied by courts in your jurisdiction? If so, what form does it take?

Even before the introduction of Article 52(3bis) of the IP Code (pursuant to which equivalents must be taken into consideration in order to determine the patent’s scope of protection), the doctrine of equivalents was commonly applied in infringement actions. According to some court decisions, infringement occurs when the main inventive idea underlying the invention is found in the allegedly infringing goods. The Supreme Court, in line with the courts of other EU member states, has held that in order to find that a product infringes a patent, it is necessary first to consider the problem that the invention seeks to solve and then to decide whether the way in which the alleged infringing product solves the same problem either belongs to the prior art or is patentable in itself. If so, the product does not infringe the patent; if not, then it constitutes infringement.

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

Business methods, software and biotechnology patents can be more difficult to enforce, particularly in cases involving interim measures. Due to the complexity of the underlying technical scientific issues, the judge usually requests an expert witness to draft technical advice in order to grant such measures. Accordingly, the proceedings can often take longer than patent cases in other technical fields.

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

The Italian courts are not bound by decisions rendered in previous similar cases, but they may certainly consider them. Precedents set by the most important courts (Milan, Turin, Rome and Naples) have some influence on the other IP courts. However, at the same time, the various IP courts can take divergent positions on complex technical issues – particularly in infringement cases – creating conflicting lines of reasoning that a patent holder must take into account when choosing the venue.

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, the reasoning and decisions of courts in other jurisdictions have little influence in Italy; the Italian courts tend to be independent. Nevertheless – mostly with regard to interim measures – if the European Patent Office or a foreign court revokes the patent (or a corresponding foreign patent), the Italian court will take the relevant decision into consideration when assessing the applicant’s likelihood of success on the merits.

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

A defendant may delay proceedings each time it files a new request with its defence briefs (eg, by claiming that the plaintiff’s patent is invalid within an infringement action). However, if it is proven that the defence is groundless, the judge will take this into account. In particular, should the losing party stay proceedings in bad faith or with gross negligence, it will have to bear all relevant costs and can be ordered by the judge to pay damages to the other party pursuant to Article 96 of the Code of Civil Procedure.

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

The IP Code provides a wide range of interim remedies, including:

  • an injunction to cease the infringing activities;
  • a penalty for non-compliance with the injunction;
  • seizure of the infringing products and the means of manufacturing them, as well as evidence of infringement; and
  • publication of the interim decision in one or more newspapers or trade magazines.

The prerequisites of any interim remedy are the existence of a danger in delay and a prima facie case. The danger in delay requirement means that the claimant must prove that the activity of the alleged infringer will cause irreparable harm before a first-instance decision can be issued. The prima facie case requirement means that the claimant must prove that it is allowed to enforce its alleged rights and that there are good reasons to believe that such rights are being infringed by the defendant. Interim measures are usually granted after the court has heard both parties, but may also be granted ex parte where the claimant can prove that the defendant’s knowledge of the application or any delay in ruling may seriously affect the enforceability and effectiveness of the interim measure.

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

The overall cost of patent litigation is significantly influenced by the complexity of the case and the issues involved. On average, the costs of interim proceedings tend to be between €25,000 and €35,000, and the costs of proceedings on the merits up to a first-instance decision between €75,000 and €100,000.

How long should parties expect to wait for a decision to be handed down at first instance?

First-instance proceedings on the merits may take as long as three to four years, depending on the complexity of the case at hand. If the relevant conditions are met, an application for interim measures before and during the pending proceedings on the merits may expedite the process.

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

The winning party is usually entitled to recover part of the costs incurred from the losing party. Recoverable costs include court costs, lawyers’ fees and expert fees. Recoverable costs usually amount to around 30% of the total costs incurred.

What remedies are available to a successful plaintiff?

The typical remedies granted to a successful plaintiff in a patent infringement action include:

  • a permanent injunction to cease the manufacture and sale of the infringing products;
  • an order to withdraw the infringing products from the market or deliver them to the patent holder – a penalty used in case the infringer does not comply promptly with any measure ordered by the court;
  • compensation for damages; and
  • publication of an abstract of the decision in one or more newspapers or trade magazines.

How are damages awards calculated? Is it possible to obtain punitive damages?

The criteria for determining damages for patent infringement are set out in Article 125 of the IP Code as an amount equal to the patent owner’s lost profits or the royalties that the infringer should have paid under a licence agreement.

In any event, the patent owner can claim the profits earned by the infringer as an alternative to compensation for lost profits or to the extent that they exceed such compensation.

Punitive damages are not allowed under Italian IP law.

Under what circumstances might a court grant a permanent injunction? How often does this happen? Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?

It is quite common for courts to grant permanent injunctions in IP rights infringement proceedings. An injunction can also be ordered against any intermediary that played a part in the proceedings. When issuing a permanent injunction, the judge may also establish a fine for each subsequent violation of the order, as well as for any delay in compliance. There are no specific provisions on the conditions for granting permanent injunctions.

However, unlike preliminary injunctions, permanent injunctions cannot be granted if the patent application is still pending.

A first-instance decision in patent proceedings can usually be appealed before the IP Division of the Court of Appeal within 30 days of notification of the judgment (or six months if the judgment has not been served). However, the Court of Appeal carries out a preliminary evaluation as to the admissibility of the appeal and may reject it if it is deemed inadmissible or apparently unfounded.

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

Appeal proceedings usually take between two and three years. Occasionally, the Court of Appeal reconsiders the technical issues that were examined during the first-instance proceedings and orders the appointment of a supplementary expert; in such case, the proceedings may last significantly longer.

Is it possible to take cases beyond the second instance?

Second-instance decisions may be challenged before the Supreme Court in case of the infringement of provisions of substantive law or procedure, failure to examine a crucial circumstance that has been discussed by the parties or questions relating to jurisdiction.

The Supreme Court carries out a preliminary evaluation as to the admissibility of the petition and may reject it if it is deemed inadmissible.

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

The Italian courts are committed to assessing and upholding the rights of patent owners. This has been particularly so in recent years, with the creation of specialised IP courts with highly qualified judges and the issue of the new IP Code.

Is your jurisdiction a signatory to the London Agreement on Translations?

The Italian government has not signed the London Agreement and has made no announcements regarding its position on this matter.

Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?

The Italian government has signed the Agreement on the Unified Patent Court, although there is no expectation as to when it will be ratified.

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Rapisardi Intellectual Property

Via Serbelloni 12

20122 Milan

Italy

Tel +39 02 763011

Fax +39 02 76301300

Web www.rapisardi.com

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Giuseppe Mercurio

Patent attorney

[email protected]

Giuseppe Mercurio is a nuclear engineer and European and Italian patent attorney. He joined Rapisardi Intellectual Property in 2002. Highly skilled in patent drafting, filing and prosecution, and with extensive experience in all IP-related matters, he provides assistance in litigation and all extra-judicial procedures for patents, designs and utility models, including oppositions, assignments and licensing. A member of the International Association for the Protection of Intellectual Property, Mr Mercurio is also a technical expert before the Court of Milan. His particular area of technical expertise is mechanics. He is fluent in Italian, English and French.

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Rossella Solveni

Attorney at law

[email protected]

Rossella Solveni, attorney at law and member of the Milan Bar Association, has been with Rapisardi Intellectual Property since 1998. With several years of experience in the IP legal consultancy field, she directly handles court litigation in Italy, while coordinating and supervising litigation in foreign countries. Ms Solveni’s activities include dispute resolution, arbitration, contracting and extra-judicial procedures for patents, utility models, designs, trademarks, domain names and all internet-related issues. She is fluent in Italian, English and French.