11 Apr
2019

Litigation and eligibility: Italy

GLP Intellectual Property Office

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

Patent owners in Italy may file a lawsuit against an alleged counterfeiter and begin proceedings on the substance of the case. If certain requirements are satisfied, the patent owner may also file a provisional remedy in order to seek a faster decision by a judge. In some cases, the decision reached in the petition must be confirmed by a subsequent main proceeding. Moreover, any request for damages can be discussed only in the main proceeding, and not in the urgent petition. In both kinds of action, the patent owner may ask for a plurality of decisions.

Q: Are parties obliged to undertake mediation/arbitration before 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. Mediation or arbitration is a possible alternative to litigation, but their use in Italy is quite low, even though both are quicker than normal legal proceedings.

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

Yes, in Italy specialised courts handle litigation on IP rights. These courts are evenly spread across the country, with one per region. The Italian system provides only seven specialised courts covering the entire country when a judicial party is not an Italian entity. In general, the judges appointed to these courts have reached a good level of expertise in IP matters. In particular, some of these courts handle most of the cases on IP rights and their judges have a very high level of expertise. The judge usually appoints a technical expert (known as an ‘expert witness’), who gives the judge a technical opinion on the matter under discussion.

Q: Are validity and infringement dealt with together or does your country have a differentiated system?

The assessment of the validity of the rights and the discussion about counterfeiting are usually handled together in the same proceedings. Article 120 (6bis) 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 mere ruling regarding the non-existence of a violation of the rights of others.

Q: Who may represent parties engaged in a dispute?

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

Q: To what extent is pre-trial discovery permitted?

Pre-trial discovery is not permitted, according to the common meaning given to this proceeding. In other words, discovery in the premises of a counterparty with many people searching for anything useful to use in a legal action is not permitted. On the contrary, discovery is allowed on the basis of a decision taken by a judge that is usually very circumstantial, in order to define in detail the extent of the discovery, namely which apparatus, product or device should be discovered, together with related documentation. No extensions beyond the perimeter 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 allowed by the judge. Recent modifications to the Industrial Property Code have been introduced to strengthen the principles of EU Directive 2016/943 on trade secrets. These changes are intended to protect defendants’ trade secrets in order not to give an unfair advantage to the petitioner.

Q: Is cross-examination of witnesses allowed? If so, what form does this take?

Most litigation cases on intellectual property 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 on the basis of the documentary evidence filed. According to the Code of Civil Procedure, the witness is heard only in relation to specific queries that are previously submitted to the court and approved by the judge. During the deposition, the witness is not cross-examined, but the judge may ask for clarification, on a motion by itself or by input from any of the parties, regarding the queries previously submitted.

Q: What use of expert witnesses is permitted?

Since the proceedings are mainly in written form, any of the parties may rely on written attachments to the briefs containing an affidavit or expert opinion regarding a particular matter under discussion. Once these 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 during a hearing about IP rights. Instead, during the court’s technical expertise phase, especially if the IP right enforced is a patent, it often happens that the expert appointed by the judge meets the technical experts of the parties in order to discuss some particular items, or to conduct tests or trials about the alleged infringing items in dedicated informal meetings without the lawyers.

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

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

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

No particular problems arise in the enforcement of biotechnology, business method or software patents. Often, depending on the complexity of the case, the main proceedings could last for a longer period, mainly due to the longer time that is required to carry out the court technical expert 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 lawsuits in which similar cases have been discussed. However, if they can assume certain relevance for the case, the judge might 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, while they tend to give less relevance to decisions coming from other Italian courts.

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 similar cases have been dealt with in other jurisdictions. A distinction should be made between validity and counterfeiting cases. In fact, if a right has been judged as invalid in another jurisdiction, this conclusion may also affect the case under discussion in Italy. In addition, it also depends on the jurisdiction, since the Italian courts may be more inclined to consider the outcome coming from other European jurisdictions with a similar approach to Italy in assessing the validity of a right.

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 some terms during the development of the proceedings. However, such a request must be well motivated. In fact, in recent years considerable changes have been made to the Code of Civil Procedure, intended to reduce the duration of lawsuits. According to these changes, it is now more difficult for any of the parties to captiously delay the duration of proceedings, since judges are disinclined to grant postponement or stay proceedings without well-substantiated grounds. If the defendant succeeds in their attempt to delay the case, the plaintiff may try to demonstrate the bad faith of the defendant and request the judge to order reimbursement of the costs and/or damages borne by the plaintiff due 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 two prerequisites are met:

  • There is danger in the delay; and
  • The case 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 has been issued. To prove that the case is a prima facie case, the petitioner must prove that the IP right that they are enforcing is a valid right and that there are good reasons to believe that the alleged infringer is infringing the said right. If the judge is convinced that these requirements are satisfied, then he or she allows the cautionary proceedings to go ahead. The order is granted after the court has heard both parties.

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

Most litigations in Italy, for the entire first instance, should generally budget for between €30,000 and €150,000, depending on the complexity of the case and how proceedings develop. The range should be considered an average, inclusive of attorney fees, both for the lawyers and IP consultants, as well as for disbursements related to the lawsuit. The budget needed to obtain a decision by a judge after the filing of a provisional remedy generally ranges from €10,000 to €60,000, depending on the requests made in the petition, the case’s complexity and how the petition develops.

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

Parties can expect to get a first-instance decision on average within around two years. In the case of an urgent petition, the 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 with the parties’ technical experts, this usually takes the written form of at least two technical briefs, and could therefore prolong the proceedings.

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 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 that can be recognised 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 the ruling are the order to pay the established amounts of damages awarded, and the order to publish (at the expense of the infringer) 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 these measures, or for any subsequent violation.

Q: How are damages calculated? Are punitive damages available?

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 entire 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. Punitive damages are not allowed according to Italian law.

Q: Under what circumstances might a court grant a permanent injunction? How often does this happen?

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

Q: Does the losing party at first instance have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?

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 notified to the parties. If the ruling has been notified, the deadline for filing an appeal is 30 days from notification, which can be made by both parties. If the ruling is not notified, 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 on average within about two years, perhaps sooner in certain cases in which the discussion is limited to only a few focused issues. The decision of the judge given on an urgent petition can also be appealed. In this case, the decision is reviewed by a panel of three judges assigned to the same court to which the judge responsible for the case belongs; in such cases, a decision will be taken in a couple of months.

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

Yes, it is. The second-instance decision may be challenged before the Supreme Court in Rome. Appeal to the Supreme Court can be made only on the basis of legal mistakes. At this level, no technical topic 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, but rather they try to give a patentee the possibility of enforcing their rights in an effective manner. In general, judges are inclined to follow the conclusion of the court technical experts if they find such conclusions convincing. For this reason, it is hard to use the expression ‘pro-patentee’ for all cases, since it depends on the merit of the individual case. There is a tendency on the part of the courts to offer the alleged counterfeiter 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: Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?

Yes, Italy has adhered to the Agreement on the Unified Patent Court, which has already been ratified by Parliament.

Q: Will your country host one or more divisions of the Unified Patent Court?

Yes, Italy is planning to host one local division of the Unified Patent Court to be based in Milan. In addition, IP stakeholders and many local and national institutions are going to explore the opportunity of presenting Milan as a candidate city for hosting the central division of the Unified Patent Court – which has actually been assigned to London – if events connected to Brexit lead to the court being re-assigned to another host city.

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.

GLP Intellectual Property Office

Via Luciano Manara 13

Milan 20122

Italy

Tel +39 02 5412 0878

Fax +39 02 5412 1214

Web http://www.glp.eu

Davide Luigi Petraz

Co-managing partner

[email protected]

Davide Luigi Petraz is co-managing partner of GLP, a European patent, trademark and design attorney and attorney at law. He began his career at an IP firm in Washington DC, where he also gained his master’s in IP law. His excellent academic background – being also a professor at the University of Trieste – is complemented by ample experience in drafting agreements and analysing and managing IP assets. His practice includes litigation advice in proceedings regarding all aspects of intellectual property, including infringement.

Davide Pilati

Patent attorney

[email protected]

Davide Pilati graduated in mechanical engineering from the University of Bologna in 2007. After almost 10 years of experience, during which he successfully qualified as an Italian and European patent attorney, he joined GLP in 2017. Mr Pilati’s main activities comprise the drafting of patent specifications and their prosecution before national and foreign patent offices. He is also confident with patent searches, the preparation of validity and counterfeiting opinions and technical assistance in lawsuits. His professional experience ranges across several skills in different fields, from mechanics to simple electronics, material science to the protection of software, automation to oleo-dynamics, as well as some manufacturing processes such as thermoforming, lamination and die-casting.

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Italy