22 Oct
2020

Italy

GLP Intellectual Property Office

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 a provisional remedy in order to seek a faster decision by a judge. In some cases, the decision obtained on the petition must be confirmed in a subsequent main proceeding. Moreover, any request for damages can be discussed only in the main proceeding, not in the urgent petition. In both kinds of action, the patent owner may ask for a plurality of decisions.

Q: Are mediation and arbitration realistic alternatives to litigation?

Mediation and arbitration are possible alternatives to litigation, but their use in Italy is limited, even though both are quicker than normal legal proceedings. A reform of mediation is currently under discussion with the aim of strengthening its effectiveness. However, it seems that any reform will have no impact on mediation in IP-related matters.

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

In Italy, 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 handled by individual judges, while a panel of judges hears the appeal phase. In both cases, the judges usually appoint a technical expert. 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 these courts, particularly those geographically based in the Centre-North of Italy, handle most of the cases on IP rights 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. Exceptions to this general rule are possible. 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 mere 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 need to be represented by lawyers that are admitted to practise and are 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 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. Typically, this place is the address of the IP firm. 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 laws provide that the lawsuit can also be based where the infringing acts are carried out.

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

Pre-trial discovery is not permitted, according to the common meaning given to such a proceeding. In other words, discovery on 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 permitted 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: 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 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 consultancy phase, especially if the IP right enforced is a patent, the expert appointed by the judge will 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 due 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 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.

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. However, a distinction should be made between validity and infringement cases. In fact, if a right has been declared invalid in another jurisdiction, this may affect the case under discussion in Italy. In addition, it also depends on the jurisdiction, 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, such a request must be well reasoned. Recently, considerable changes have been made to the Code of Civil Procedure to reduce the duration of lawsuits. According to these changes, it is now 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 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:

  • 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 they are enforcing is a valid right and that there are good reasons to believe that the alleged infringer is infringing said right. If the judge is convinced that these requirements are satisfied, the precautionary proceedings can go ahead. The order is granted after the court has heard both parties.

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 written form of at least two technical briefs 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 €40,000 and €150,000, 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 attorneys’ 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 attorneys’ 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 the ruling are the order to pay the established amounts of damages awarded, and the order to publish (at the infringer’s expense) a summary of the decision in one or more national newspaper or magazine. 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 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 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.

Q: Under what circumstances will courts grant permanent injunctions?

In order 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. The decision is reviewed by a three-judge panel 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 grounds 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’s 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 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 fora 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 tries to reach an extrajudicial settlement.

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 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.

Daniele Giovanni Petraz

Co-Manging Partner

[email protected]

Daniele Giovanni Petraz is co-managing partner of GLP Intellectual Property Office. He graduated in industrial engineering from the Polytechnic University of Milan. After working as a patent engineer at one of Vienna’s main IP firms, Mr Petraz began to play an important role in the development of GLP and is presently in charge of financial management and head of the international department. On a daily basis he helps clients with strategic consultancy on IP matters related to the development of new products and on prosecution strategies. His international outlook, strong business skills and IP knowledge mean that he is appreciated for the competence and effectiveness of his business-oriented and pragmatic approach.

Davide Luigi Petraz

Co-managing partner

Davide Luigi Petraz is co-managing partner of GLP Intellectual Property Office and a European patent, trademark and design attorney and attorney at law. He started his career at an IP firm in Washington DC, where he also gained his master’s in IP law. Mr Petraz’s excellent academic background – being also a professor at the University of Trieste – is complemented by broad experience in drafting agreements and analysing and managing IP assets. His practice includes litigation advice in proceedings regarding all aspects of intellectual property, from infringement to unfair competition and the disclosure of trade secrets. He has considerable experience representing companies before the EPO, demonstrating strong expertise with a unique mix of technical and legal acumen.