Patent litigation in Italy: overview

A Q&A guide to patent litigation in Italy.

The Q&A gives a high level overview of patent disputes, including how patent infringement is assessed; the conditions for a declaratory judgment; invalidation proceedings; preliminary relief and enforcement options.

To compare answers across multiple jurisdictions visit the patent litigation Country Q&A tool.

This Q&A is part of the global guide to Patent Litigation. For a full list of jurisdictional Q&As visit www.practicallaw.com/patentlitigation-guide.

Massimo Sterpi and Luca Ghedina, Studio Legale Jacobacci & Associati
Contents

Sources of law

1. What are the principal sources of law and regulation relating to patents and patent litigation?

The principal source of law relating to patents in Italy is the Code of Industrial Property (CIP), which repealed and reorganised all prior legislation on industrial property, including the old Patent Law. The CIP entered in force on 19 March 2005. The implementing rules of the CIP, mainly dealing with administrative issues and procedures before the Italian Patents and Trademarks Office (Italian PTO), are contained in Ministerial Decree No 33 of 13 January 2010.

Patent litigation follows the general rules set out under the Code of Civil Procedure, except for some specific provisions on remedies and sanctions set out under the CIP.

In addition, Italy is party to a number of international treaties concerning patent law, aimed at either setting a minimum level of protection in member countries (such as the WIPO Paris Convention for the Protection of Industrial Property, the Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Inventions 1963 or the WTO Agreement on Trade-related Aspects of Intellectual Property Rights 1994, harmonising patenting procedures (such as the Patent Co-operation Treaty 1970), or providing multi-jurisdictional protection (such as the European Patent Convention 1973 as in force and revised by the EPC 2000).

As a member state of the European Union, Italy is also affected by Community legislation, in particular by directives (such as Directive 2004/48/EC on the enforcement of intellectual property rights), which was implemented by adding to the remedies already set out under the CIP) and regulations (such as Regulation (EC) 6/2002 on Community designs). Italy is also a party to the Agreement on a Unified Patent Court.

Although legislation prevails over case law, established principle provides for the primacy of EU law. In particular, EC regulations are directly binding over internal legislation and will prevail where there is any conflict between the two.

Court precedents are not binding for future cases between different parties. However, they can certainly have a persuasive effect on future decisions, especially in similar cases and if they represent consistent case law.

 

Court system

2. In which courts/government bodies are patents enforced?

Since 2003, civil litigation in Italy concerning IP matters (including patent litigation) has been concentrated in a limited number of courts, within which specialised sections have been set up to exclusively deal with business-related matters, including, in particular, IP matters. These are called the "Companies' Courts" (Tribunali delle Imprese). The Companies' Courts currently consist of 22 first instance Tribunals and Courts of Appeal, of which only 11 have exclusive jurisdiction over cases in which a foreign company is a party to the proceedings. In practice, most patent litigation, particularly where it involves foreign parties, is concentrated in a limited number of Companies' Courts located in the areas of major economic and industrial relevance (that is, Turin, Milan and Rome).

Although judges in the Companies' Courts do not normally have a technical background, it is customary for the court to appoint a technical expert to give an opinion in writing on matters of patent validity and/or infringement. During the investigation carried out by the court expert for this purpose, the parties have the right to appoint their own technical expert that will be involved by the court expert in a kind of "technical mini trial" (exchange of written briefs, experts' meetings and laboratory tests, where needed). At the end of this investigation, the court expert will file a written report including any comments made by the parties' experts and his evaluation of them. While in most cases the court will follow the court expert's conclusions and arguments, it is not obliged to do so as long as the reasons for a different conclusion are duly explained. In fact, there are quite a number of decisions where the court did not follow the expert's conclusions.

The patent office or any other government body do not have any jurisdiction in patent litigation.

Italy is expected to host a local or regional division within the Unified Patent Court system, although that decision has not yet been taken.

 
3. Do the courts/government bodies deal with infringement and invalidity simultaneously or must invalidity actions be brought in separate proceedings?

Infringement and invalidity actions can be brought simultaneously before the same court and within the same proceedings. Indeed, a typical defence open to a defendant in infringement proceedings is to claim, where possible, nullity of the patent enforced by the claimant.

Since 1 July 2008, first filings of Italian patents claiming no priority are the subject of a search report on prior art carried out by the European Patent Office under agreement with the Italian PTO. The availability and content of an official search report (whether relating to the patent being enforced or to equivalent foreign patents) may influence a prima facie evaluation on the validity of the patent.

The Italian PTO has no jurisdiction in respect of patent nullity claims.

 
4. Who can represent parties before the court and/or government body?

Parties to patent litigation must be represented by one or more attorneys admitted to the bar in Italy. In respect of any technical expertise which may be presented to the court during infringement or invalidity proceedings (which is often the case), parties may also be represented by patent attorneys or other technical experts to address the relevant technical issues with the court-appointed expert.

 
5. What is the language of the proceedings? Is there a choice of language?

The official language of the proceedings is Italian, with no other choice. As a consequence, the courts, or another party to the court proceedings, may require that any documents drafted in a foreign language be filed together with a sworn translation. However, sometimes the Companies' Courts do not request translations of documents in English or French, if they can understand them.

If Italy hosts a local or regional division within the Unified Patent Court (UPC) system, as expected, the language of the proceedings will be determined according to the rules provided for under Article 49 of the UPC Agreement.

 
6. To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts, or other national or international bodies, that have handed down decisions in similar cases?

No doctrine of binding precedent is applied by Italian courts. However, prior national court decisions may have a persuasive effect on courts handling similar cases. A similar effect may also be recognised with foreign precedents, including the case law of the Boards of Appeal of the European Patent Office, which may offer guidance especially in matters not expressly considered by domestic legislation or case law. In addition, the role of EU case law has significantly increased in the last few years, in particular as a binding source on preliminary reference to the Court of Justice on the interpretation and validity of EU legislation under Article 267 of the Treaty on the Functioning of the European Union.

 

Substantive law

7. How is patent infringement assessed?

Patent infringement is established when the inventive idea object of the patent (as determined from an interpretation of the patent based on the claims, the description and the drawings) has been reproduced in its essential elements. Literal reproduction of all elements of the inventive idea is therefore not strictly necessary, but there will be no infringement if only one of the features of a claim is reproduced and this feature is not essential to the patent.

Under the doctrine of equivalents, Italian case law accepts that patent infringement may also be established when the inventive idea underlying the patent is reproduced not by literally using the same elements claimed under the patent, but through equivalent means which have the same function and produce a corresponding result. The approach of the case law precedents on this topic tends to be quite stringent in an attempt not to excessively broaden the scope of protection of the patent, which is why the assessment is based on a case-by-case evaluation avoiding the use of general principles.

 
8. What defences are available to an alleged infringer?

An alleged infringer will try to exclude infringement of the patent enforced by raising the exceptions of non-infringement and/or invalidity, or by seeking a declaratory judgment of non-infringement and/or counterclaiming invalidity of the patent enforced. The above defences will be available by way of exceptions within preliminary proceedings, and may be raised as counterclaims only within proceedings on the merits. However, it is also possible to apply for a finding of non-infringement within preliminary proceedings.

 
9. On what grounds can a patent be invalidated?

A patent can be invalidated on the following grounds:

  • Lack of objective requirements (non-patentability, lack of novelty, lack of inventive step, lack of industrial application, invention contrary to public order or morality).

  • Lack of sufficiently clear and complete description.

  • Extension of the object of the patent beyond the scope of the initial application or extension of protection.

  • Lack of subjective requirements (in particular, in the case of patent applications by persons not entitled to it).

There is some discussion as to whether the above list should be considered exhaustive. However, the prevailing opinion is in favour of its exhaustive character.

 
10. Can a court only partially invalidate a patent or transform it into a utility model?

A patent can be partially invalidated by a court, in which case the decision will provide for a limitation of the patent. As a consequence and in principle, one or more patent claims will need to be either reduced or reformulated by filing a corresponding application with the Italian PTO.

As a general rule, an invalid patent may produce the effects of a different patent (for example, a utility model) where it meets the validity requirements and where that patent could have been applied for by the applicant if it had known of the invalidity of the original application. A corresponding request for conversion of the invalid patent must be made (at any time and in any instance of the proceedings) by the patent holder. Upon assessment of the relevant requirements, the court orders the conversion of the invalid patent and the patent holder must file a corresponding application for amendment of the patent within six months from the date that the decision becoming final. If the conversion of the patent implies a longer duration, licensees and those who had made substantial investments to use the object of the patent in view of its imminent expiry are entitled to obtain a compulsory, royalty-free and non-exclusive licence for the new longer term of protection (Article 76, Code of Industrial Property).

 
11. Is it possible to amend patent claims during proceedings?

Official amendments to patent claims must be filed with the Italian PTO by requesting a limitation of the patent. While pending a nullity action, the patent holder may submit to the court (at any time and in any instance of the proceedings) a rewording of the claims which cannot exceed the original contents of the patent application nor extend its original scope of protection (Article 79.3, Code of Industrial Property (CIP)). In such a case, the court will issue a judgment of partial nullity of the patent, setting the new claims as resulting from the limitation (Article 76.2, CIP).

 
12. Are there any grounds on which an otherwise valid patent can be deemed unenforceable?

Enforceability of a patent implies that it has legal effect against third parties. A patent has effect from the date on which the relevant application, with the attached claims, description and drawings, are made accessible to the public (18 months from filing or from the priority date, or 90 days from filing if the applicant has declared in the application that they will make it immediately available to the public). However, it is possible to anticipate the effect in respect of third parties on which the application has been formally served together with the claims, the description and the drawings. In this case, the effect of the patent dates back to the date of service as regards such third parties. Protection lasts for a period of 20 years from filing.

The law also provides for specific cases in which the conduct of the owner affects the enforceability of the patent, as is the case with a failure to pay the annual taxes (forfeiture) (Article 75, Code of Industrial Property (CIP)) or a failure to carry out the invention object of the patent within the given terms (compulsory licence and forfeiture) (Article 70, CIP).

 

Parties to litigation

13. Who can sue for patent infringement?

Patent holder

An action for patent infringement can be brought by the owner of the economic rights over the patent (whether the original owner or the assignee).

Exclusive licensee

An action for patent infringement can also be brought by the licensee (whether exclusive or, under certain conditions, non-exclusive: see below, Non-exclusive licensee).

No registration of the licence is required in order to allow the licensee to sue. The existence of the licence can be proved by any means, including presumptions (for example, a licence will be presumed in the case of a joint action or where the patent holder is the legal representative of the company using the product claimed in the patent).

Non-exclusive licensee

As no specific rule is provided by the law in respect of actions by the licensee, some case law precedents have concluded that an infringement action may not be brought solely by a non-exclusive licensee, and have required that the action be brought jointly by the patent owner and the non-exclusive licensee, or that the patent owner has specifically authorised the non-exclusive licensee to sue. Registration of the licence is irrelevant in this respect, but the existence of the licence must be proved.

Distributor

The distributor, not being the owner of any rights over the patent, cannot sue for patent infringement.

 
14. Under what conditions, if any, can an alleged infringer bring proceedings to obtain a declaratory judgment on non-infringement?

A lawsuit to obtain a declaratory judgment on non-infringement can be brought only by an alleged infringer, that is, by a person against whom the patent holder has already raised claims for patent infringement (for example, through a cease and desist letter). Such claims can be also indirect, as in the case where the patent owner has raised claims for patent infringement only against the distributor or final clients, and not directly against the producer. In such a case, the action for declaratory judgment on non-infringement can be also brought by the producer, in addition to the distributor, as claims for patent infringement in respect of the distribution of infringing products necessarily extend to their production.

A finding on non-infringement may also be sought on an urgent and provisional basis within interim proceedings.

 
15. Who can be sued for patent infringement?

Any person participating in the production, use or sale of the patented product or process can be sued for patent infringement (for example, the producer, the distributor, the retailer, the person showing the infringing products at a trade fair, the person buying and using the infringing product in its industrial activity, and so on).

Company directors cannot be sued personally unless the alleged infringing activity is claimed to refer to them personally and not as legal representatives of the company.

Under the doctrine of contributory infringement, Italian case law has in a few instances accepted (failing an express provision under the law) that a producer and/or supplier of non-patented components, to be used within a patented product or method, may be held jointly liable for patent infringement together with a third party to which those components are delivered and by which they are used within the product or method carrying out the inventive teaching of the patent. This joint liability is based on the general principles of tort liability as wilful or negligent contribution to the infringement committed by a third party. This is established, in particular, when the producer and/or supplier is aware, or is to be considered aware under the circumstances, of the univocal destination of those components to the patent infringement committed by the third party. Such univocal destination is, in its turn, established when those components may not be lawfully used for any other purpose or, if this is the case, when they are expressly produced and/or supplied with reference to the patented product or method and with the univocal and intentional destination to carry out the inventive teaching of the patent.

 
16. Is it possible to add or remove parties during litigation?

Third parties can intervene in pending proceedings either on a voluntary basis (for example, the patent holder when the action has been commenced by the licensee) or by order of the judge (for example, when the claimant failed to extend the nullity action to all persons registered as owners of economic rights on the patent, such as a registered licensee). Rules of procedure provide for stringent time limits for the intervening party to raise or support claims in the proceedings, depending on the various situations.

Removal of parties during litigation is possible not as a general principle, but only in the specific cases provided for under the law and upon order of the judge (for example, when the guarantor intervenes and accepts the continuing of litigation in place of the guaranteed party, or when the right being the object of litigation is assigned during the proceedings and the new owner intervenes, and in both cases the consent of the other parties to the proceedings is required).

 

Enforcement options

17. What options are open to a patent holder when seeking to enforce its rights in your jurisdiction?

A wide range of options are open to a patent holder to enforce its rights, including civil proceedings, criminal proceedings, border measures and, as the case may be, arbitration.

Civil proceedings

Civil proceedings are the most common option resorted to by a patent holder to enforce its rights, either seeking preliminary relief or full assessment on the merits for patent infringement. Please see Questions 24 and 31 for the respective formats of litigation.

Criminal proceedings

Criminal prosecution in respect of patent counterfeiting or infringement can be based on:

  • Article 473 of the Italian Criminal Code, which provides for punishment with imprisonment from one to four years and a monetary fine of between EUR3,500 to EUR35,000, plus seizure of the infringing goods, for whoever counterfeits or alters Italian or foreign patents or registered designs, or uses such counterfeited or altered patents or designs. The penalties are increased to two to six years of imprisonment plus a fine of between EUR5,000 to EUR50,000 in the case of systematic or organised infringement.

  • Article 517-ter of the Italian Criminal Code, which, without prejudice to the above, provides for punishment with imprisonment of up to two years and a monetary fine of up to EUR20,000 for whoever industrially manufactures or uses objects or other goods in violation of an IP title, when they are aware of its existence.

In the second case mentioned above, criminal prosecution must be requested, and may be later stopped by the right owner. However, in the first case mentioned above, prosecution can also be initiated by the Public Prosecutor on its own motion.

It must be stated that the relationship between the aforementioned two provisions, which clearly overlap, is quite unclear and remains subject to dispute.

Border measures

Seizure of infringing products entering or leaving the EU can be obtained through the customs authorities following the procedures provided for under EU Regulation 608/2013 (as well as the implementing rules laid down by EU Regulation 1352/2013). Under the Regulation, customs authorities are required, where they ascertain that the goods in transit may infringe an IP right (usually upon consulting the rightholder), to suspend release of or detain the goods, and to promptly inform the relevant rightholder. The rightholder has ten working days (which in justified cases may be extended by a further ten working days) to inform the customs authorities that infringement proceedings have been initiated before the competent civil or criminal courts. In the case of blatant counterfeiting, the customs authorities must also inform the Public Prosecutor, thereby initiating criminal proceedings. Failing any such proceedings, either civil or criminal, the goods are released. The application for customs action may be lodged by the rightholder in advance of intervention by the customs authorities or upon notification by the customs authorities of suspension of release or of detention. In the latter case, the application by the rightholder must be lodged within the following three working days from notification. Simplified procedures apply under the above Regulation in order to obtain destruction of the goods seized.

Other

Arbitration proceedings may also be available, with the agreement of the parties (see Question 21).

 
18. Is it compulsory to send a cease and desist letter to an alleged infringer before commencing patent proceedings?

It is not compulsory to send a cease and desist letter to an alleged infringer before commencing patent proceedings.

Making unjustified threats which claim patent infringement is an act of unfair competition, provided that the unjustified threat is either brought to the attention of third parties, or is made with fault and results in a prejudice, and it can lead to liability for damages.

 
19. To what extent are courts willing to grant cross-border or extra-territorial injunctions (preliminary or permanent)?

Cross-border injunctions in IP matters are rarely issued by the Italian courts, although remarkable precedents relate to the protection of geographical indications or copyright.

There appear to be no specific precedents on cross-border injunctions actually issued in respect of patents. However, the general admissibility of such measures in patent litigation has not been expressly excluded, but rather implied by some case law precedents dealing with this topic. It is the subject of some debate in legal writing.

Whereas issues of patent validity pertain to the exclusive jurisdiction of the courts of the state of filing or registration (Article 22.4, EC Regulation 44/2001), cross-border injunctions in respect of patent infringement issues may be based on the provision allowing for a request of preliminary relief before the courts of a member state, even if the courts of another member state have jurisdiction on the merits (Article 31, EC Regulation 44/2001). In a significant precedent, the requested cross-border injunction was rejected because proceedings were pending in the relevant foreign jurisdiction on either patent infringement or validity, this implying that the measure requested would have been either duplicated or nullified, depending on the results of the relevant foreign proceedings. In addition, difficulties may follow in respect of European patents from the provisions of Article 64.3 of the European Patent Convention, under which the infringement of the national portion of a European patent is ascertained according to the laws of the country in which infringement is claimed. Therefore, if one court has multinational jurisdiction, it should apply to each foreign patent the applicable foreign national law.

 
20. To what extent do courts recognise the blocking effect of "torpedo" actions abroad?

"Torpedo" actions have in the past been typically filed before the Italian courts with the aim of trying to take advantage of the long duration of patent litigation. However, after the establishment of the Companies' Courts, the duration of patent litigation has become much shorter in Italy, so that this advantage nowadays has been significantly reduced.

The typical scenario of a "torpedo" action will be that of an alleged infringer filing an action for a declaratory judgment of non-infringement (even if unfounded) before slower courts in order to anticipate and block the infringement actions that the patent holder may file before the faster court of a different country. This would then stay the infringement proceedings awaiting the results of the non-infringement action first filed. This can typically occur in the case of different national portions of a European patent.

"Torpedo" actions are based on the special jurisdiction provision of Article 5(3) of EC Regulation 44/2001 in respect of tort liability, allowing a party to sue before the courts of the place where the harmful event occurred or may occur.

Italian courts have showed in recent years a negative attitude against "torpedo" actions. This negative approach was based on the understanding that the general principle of domicile of the defendant as a basis for jurisdiction cannot be prejudiced by too wide an interpretation of the cases of special jurisdiction. In particular, according to such precedents, special jurisdiction for tort liability will not help in establishing an action for non-infringement, as in such a case no unlawful behaviour and no harmful event is claimed to occur by the claimant, who claims exactly the contrary. This case law, which in 2003 was endorsed by the Italian Supreme Court (Court of Cassation No 19550/2003), led to a non-recognition of the blocking effect of "torpedo" actions on the grounds of lack of jurisdiction when the non-infringement action is commenced in an EU member state where the patent holder is not domiciled.

However, the European Court of Justice has later clarified that Article 5(3) of EC Regulation 44/2001 "must be interpreted as meaning that an action for a negative declaration seeking to establish the absence of liability in tort, delict, or quasi-delict falls within the scope of that provision" (ECJ in case C-133/11, Folien Fischer). On this basis, the Italian Supreme Court has most recently reversed its prior case law expressly recognising the jurisdiction of Italian courts on cross-border actions for the assessment of non-infringement of non-Italian portions of European patents (Court of Cassation No 14508/13).

 
21. To what extent are arbitration, and alternative dispute resolution (ADR) methods (such as mediation), available to resolve patent disputes?

Arbitration

Arbitration in respect of IP matters has been expressly provided for under the new Code of Industrial Property (CIP). Arbitration is therefore available in respect of patent litigation, as it was generally admitted under prior legislation at least in respect of patent infringement issues.

Doubts have been raised in the past as to whether arbitration should be available in respect of patent invalidity issues. This has generally been excluded and admitted only in isolated cases by underlining that the arbitral decision on invalidity will only have effect between the parties (that is, not erga omnes). This issue is not expressly dealt with by the new CIP. However, the new CIP overcomes one of the major arguments against arbitration on patent invalidity under the old law (that is, the compulsory participation of the Public Prosecutor in patent invalidity proceedings, which has now been repealed). However, the other major hurdle to arbitration on patent invalidity issues (that is, the fact that only a court may issue an invalidity decision with effect erga omnes) has not been expressly amended by the new legislation. It still remains to be seen how case law will apply the new rules in respect of this issue.

See Arbitration procedures and practice in Italy: overview.

ADR

Specific cases of arbitration and mediation are provided under the law when an agreement is not reached by the parties and for limited purposes (for example, for determining the equitable fee to be paid in some cases to employee inventors, or the indemnity to be paid in the case of expropriation, or within proceedings for obtaining a compulsory licence).

See Litigation and enforcement in Italy: overview.

 

Competition and anti-trust

22. Can a patent holder bring proceedings claiming both patent infringement and unfair competition for the same set of facts?

There is no doubt that a patent holder can bring a lawsuit for unfair competition in addition to patent infringement on the basis of a different set of facts (for example, claiming that the infringer's products not only infringe the patent, but are also liable to cause confusion on the market with the patented products of a competitor because of their shape, colour or other distinctive elements). However, it is disputed whether patent infringement on its own will be sufficient to establish unfair competition. This has been admitted by a number of precedents, but is excluded by the prevailing case law which underlines that a claim for unfair competition only based on patent infringement will be absorbed by the patent infringement claim. The main argument used in prevailing legal writing against the possibility of considering patent infringement as an act of unfair competition is based on the consideration that this approach would risk allowing unjustified patent protection beyond its statutory time limits.

 
23. To what extent can enforcement of a patent expose the patent holder to liability for an anti-trust violation?

A typical example of where patent enforcement is liable to amount to an anti-trust violation is provided when the patented technology is part of a compulsory standard. In this respect, the case law has recognised, on the basis of domestic anti-trust legislation, a duty on the patent holder to grant licences to third-party competitors on a reasonable and non-discriminatory basis.

 

Procedure in civil courts

24. What is the format of patent infringement proceedings?

Cases concerning IP matters, including patent litigation, are decided by a panel of three professional judges.

The format of patent infringement proceedings follows the format of ordinary civil proceedings under the general Code of Civil Procedure. Additional provisions contained in the Code of Industrial Property apply to remedies, preliminary relief and to some extent to evidence, but do not affect the general format of patent litigation.

The claimant serves on the defendant a deed of summons for a hearing scheduled not earlier than 90 days from the date of service (150 days if service is to be effected abroad). The defendant must file its brief of appearance at least 20 days before the date of the hearing scheduled by the claimant. Appearance at a later date is possible but it entails forfeiture of certain rights (including the right to file counterclaims, such as patent invalidity or damages, or to extend the litigation to a third party).

At the first hearing, the judge grants the parties, if requested by either of them, the following terms for further briefs:

  • 30 days for adjusting and amending their respective claims, exceptions and conclusions.

  • A further 30 days for replying to those adjustments or amendments and producing or requesting evidence.

  • A further 20 days for producing or requesting counter-evidence.

The second hearing is aimed at discussing and/or gathering evidence. At this stage, the judge will typically entrust a court expert to assess the issues of patent validity and infringement, and patent attorneys are also typically appointed by the parties to handle the relevant issues within a technical mini-trial (Consulenza Tecnica d' Ufficio (CTU), see Question 2). Once the issues of patent validity and infringement have been positively resolved, a further court expert, normally an accountant, may be appointed to assess damages. Further hearings may be needed to complete the gathering of evidence (for example, to hear witnesses), as the case may be.

Once the evidentiary phase is completed, the proceeding judge schedules a last hearing, at which the parties formally restate their final claims. The parties are then granted further terms to file their final pleadings (within 60 days from the last hearing) and replies (within 20 days after the final pleadings are filed). If requested by either party, the court may set a hearing for oral discussion, to be held after the filing of the last written replies.

The decision is issued by the court within 60 days from expiry of the deadline for filing the last written replies or, if scheduled, from the hearing for oral discussion. This term is not mandatory for the court.

First instance decisions are immediately enforceable.

 
25. What are the rules and practice concerning evidence in patent infringement proceedings in your jurisdiction?

Documents

The parties can file documents and request other evidence (such as witness evidence) within the mandatory terms granted for this purpose at the first hearing (see Question 24).

Affidavits, and in general sworn declarations by third parties, have the same value as any other written document and must be confirmed by oral witnesses if the other party so requests.

Witness evidence

Witnesses must be indicated by the party requesting to have them heard by the court, also indicating the actual questions on which they will be asked to respond. In civil litigation, it is not possible to cross-examine witnesses, but the court can, on its own motion or upon the parties' request, ask the witness to clarify specific facts and/or confront them with other witnesses in the case of conflicting statements. A new format of witness evidence in writing is also available, provided all parties agree.

Expert evidence

Technical expertise is usually resorted to by the court in patent matters, with a view to having validity and/or infringement issues assessed by an expert. The court-appointed expert can receive from each party documents pertaining to the scope of the technical expertise and will make those documents known to all parties, and carries out his/her technical assessment by allowing the parties to contribute through private experts, who will typically file and exchange their respective technical briefs.

Normally, there is no oral hearing devoted to the court expert, but the judge can, at his own discretion, order the expert's appearance and ask him questions and clarifications. In this case, the party-appointed experts are also entitled to appear and submit their views (see Question 2).

 
26. Is evidence obtained in criminal proceedings admissible in civil proceedings and vice versa?

In principle evidence obtained in criminal proceedings is admissible in civil proceedings, provided the relevant rules of procedure have been complied with in the first proceedings. However, evidence which has been formed out of the proceedings is never per se binding on the court and must be assessed separately by the civil court.

 
27. Is evidence obtained in civil proceedings admissible in other civil proceedings?

In principle evidence obtained in civil proceedings is admissible in other civil proceedings, provided the relevant rules of procedure have been complied with in the first proceedings. However, evidence which has been formed out of the proceedings is never per se binding on the court and must be assessed separately by the other civil court.

 
28. To what extent is pre-trial disclosure permitted and what other mechanisms are available for obtaining evidence from an adverse party or third parties?

Pre-trial discovery

Discovery, whether before or during trial, is not permitted as a general rule under Italian law.

Other mechanisms

To a limited extent, specific mechanisms for obtaining evidence from the adverse party or third parties are available as a preliminary relief and within proceedings on the merits (see Question 31).

 
29. What level of proof is required for establishing infringement or invalidity?

The claimant must provide full evidence in support of its claims following the principle of the burden of proof, and each party must prove the facts on which its claims and/or exceptions are based. The decision of the court must then only be based on the evidence provided by the parties. As a consequence of the rules on the burden of proof, the court will have to dismiss a claim if not satisfied by the evidence submitted by the claimant. The standard of proof before a civil court is not as high as before a criminal court and may also involve a balance of probabilities. With respect to patent invalidity issues, the prior date of any novelty destroying documents is usually strictly evaluated.

 
30. How long do patent infringement proceedings typically last?

Patent infringement proceedings on the merits, which typically also include the issue of patent invalidity raised by the defendant by way of exception or counterclaim, usually last from two to three years. A longer timeframe can apply, depending on:

  • The level of complexity of the issues involved.

  • The need for technical expertise in the case.

  • Any backlog that the court may have.

Fast-track procedures

There is no specific technical means to substantially expedite proceedings other than strategy (for example, requesting preliminary relief prior to an action on the merits or reserving damages to separate proceedings). However, in general, the duration of patent litigation proceedings has benefited greatly from the process of concentrating IP litigation into specialised Companies' Courts within the country.

Timetable

Unfortunately, it is not possible to agree on a binding timetable, as timing is at the judge's discretion.

Delay

A defendant seeking to delay the proceedings will typically try to raise all possible formal exceptions and counterclaims. However, should these prove to be grossly unfounded, the party at fault can be held liable for costs or even damages (although these are rarely ordered) for bad faith or negligent defence.

Proceedings can be stayed upon joint request of both parties for no more than three months, and a stay can only be provided once. However, while pending negotiations and provided no mandatory terms are running, courts usually accept the parties' joint request to reschedule the hearing to a later date. In addition, the court must stay proceedings when the decision of the case depends on the decision of a different case already pending.

 

Preliminary relief

31. Is preliminary relief available, and if so what measures are available and under what conditions?

Preliminary relief is available both before and during proceedings on the merits. In particular, the rightholder can request:

  • Description.

  • Seizure.

  • Removal from the market of the infringing products.

  • Injunction with the provision of a penalty.

  • Seizure of assets to ensure recovery of damages in specific cases.

  • Publication of the decision.

In order to obtain preliminary relief, evidence must be given of both:

  • The prima facie existence of the applicant's rights and of the infringement of those rights.

  • Serious and irreparable damage caused to the applicant by the infringer.

Search and preservation orders

With a motion for preliminary relief, the claimant can request a description of the infringing products and of the relevant means of production, as well as of any other evidence relating to the alleged infringement (such as accounting and commercial documents, production drawings, and so on).

Typically, proceedings for description are commenced in order to obtain pre-trial evidence of infringement (provided the requirements for preliminary relief are met), and in order to use such evidence within the action on the merits to follow. At the same time, the applicant can request that further measures (such as, in particular, seizure) be granted as a result of the description.

Following recent amendments to the law, description is granted within fully contradictory proceedings, a hearing always being scheduled either prior to granting the measure or after the ex parte order, for the purpose of discussing further measures which the rightholder may have requested together with, or subordinately to, the description.

If no infringement is shown as a result of the description operations, the claimant is subject to possible liability for damages, provided that the other party pursues this claim and gives the necessary evidence within a following action on the merits. In view of the possible liability for damages, the judge may order the applicant to provide security.

Both within preliminary proceedings and proceedings on the merits, the judge can also order the defendant (or third parties) involved in the production, manufacture or distribution of infringing goods or services, upon a justified and proportionate request of the claimant, to provide information on the origin and distribution networks of those goods or services (the "right of information"). The claimant must indicate the persons to be heard and the facts on which they will be questioned by the court. If the person being questioned refuses to respond or supplies false information, they can be subject to criminal sanctions.

Within proceedings on the merits, the judge can order the defendant, upon the claimant's request, to exhibit documents or information in respect of which the claimant has provided sufficient circumstantial evidence. In such a case, the judge can also order the defendant to provide all appropriate elements to identify other subjects involved in the production and distribution of the infringing products, as well as to exhibit commercial and financial documents in the case of infringement committed on a commercial scale through acts of piracy.

Injunctions

Preliminary injunctions are a typical remedy in patent litigation and are usually coupled with a monetary fine, which is payable to the applicant in the case of non-compliance or delay in compliance.

As with all other interim relief provisions, injunctions are also subject to evidence of:

  • The prima facie existence of the applicant's rights and of their infringement.

  • Serious and irreparable damage caused to the applicant by the infringer.

Urgency is therefore an essential element for interim injunctions to be granted. Even if there is no fixed rule, normally a delay of more than six months before taking action is considered too long for an action to be considered urgent. In general it is advisable to try to obtain and use fresh evidence of infringement.

Injunctions can be also granted ex parte (that is, without having previously heard the party against which the measure is directed), but only in circumstances where hearing the other party would prejudice the enforcement of the measure requested. This also applies to other interim relief measures, in particular to seizure and description orders, which may be issued ex parte in cases of special urgency, when possible delays would cause irreparable prejudice to the rightholder. In all cases of interim relief granted ex parte, with the same order the judge schedules a hearing for the appearance of both parties, to be held within the following 15 days and at which the order already issued can be confirmed, modified or revoked.

With respect to cross-border or extra-territorial injunctions, see Question 19.

Upon issuing an order for preliminary relief, the judge sets a deadline within which the parties must initiate proceedings on the merits. Where the judge does not set a deadline, proceedings on the merits must be commenced within 20 working days or 31 calendar days, whichever is the longer. If proceedings on the merits are not initiated within the applicable deadline, or if proceedings on the merits are extinguished after commencement, the preliminary measure loses its effects.

This rule does not apply in respect of urgency measures granted under Article 700 of the Code of Civil Procedure (CCP) (which apply mainly to unfair competition claims) and of preliminary relief anticipating the effects of the decision on the merits, as is typically the case of preliminary injunctions. In these cases either party may commence proceedings on the merits, failing which an agreement on stabilisation of the preliminary relief will be implied.

Other

As a preliminary relief available against piracy, the applicant may also request, upon supplying evidence of circumstances likely to endanger its recovery of damages, preventive seizure of the infringer's assets, including the blocking of its bank accounts up to the amount of presumed damages, and the court can order the communication of bank, financial or commercial documents, or appropriate access to the relevant information.

A recently introduced remedy (Consulenza Tecnica Preventiva), independent of preliminary relief and therefore of urgency, is given by providing the rightholder with the possibility to request the court to appoint an expert so as to evaluate the existence of patent infringement and damages prior to any legal action. This is for the purposes of reaching an amicable settlement of the dispute. If an agreement is not reached between the parties with the help of the court expert, the technical evaluation of the expert can be used in proceedings on the merits to follow (Article 128, Code of Industrial Property, Article 696-bis, CCP).

 
32. Can a protective writ be filed at the court at which an ex parte application may be filed against that defendant?

Protective writs do not exist under Italian practice.

 
33. What is the format/procedure of preliminary injunction proceedings?

General

Upon application by the rightholder seeking preliminary relief, the court schedules a hearing for the appearance of the parties, at which the case is discussed and, where needed, evidence is gathered on an informal basis. The order is issued at the end of the hearing or, in most cases, shortly thereafter.

When hearing the other party would prejudice the enforcement of the measure requested, or in cases of special urgency, when possible delays would cause an irreparable prejudice to the rightholder seeking description or seizure, the order may be issued ex parte. In this case, a hearing is scheduled within the following 15 days with a view to confirming, modifying or revoking the measures granted ex parte.

Level of proof

Prima facie evidence is required and sufficient within preliminary proceedings.

Evidence

During preliminary proceedings evidence is gathered on an informal basis in view of the urgency to proceed. Affidavits have in principle the same value as other documents filed by the parties, and any witnesses or persons informed of the facts at issue may be heard, where deemed appropriate by the judge, with no formalities at the hearing for discussion of the application. Court-appointed or private experts may be used if the judge deems it appropriate to resort to technical expertise on technical issues regarding infringement and/or validity of the patent enforced. In these cases, however, normally the terms granted to the expert to evaluate the matter are rather short.

Patent validity

Invalidity of the patent within preliminary proceedings can be raised by the defendant as an exception against the infringement claim and, where supported by adequate evidence, will be taken into account by the court. An interlocutory finding on invalidity reached by the court within preliminary proceedings cannot become res judicata. A final decision stating invalidity of the patent and ordering its cancellation can only be obtained within proceedings on the merits to follow.

Length of proceedings

Preliminary proceedings typically last from two to three weeks, up to two to three months or more, depending on whether the measures are granted ex parte or not and whether the judge resorts to technical expertise or not.

 
34. If a preliminary injunction is granted and the main infringement action is finally lost, can the defendant claim damages for the unjustified preliminary injunction?

When granting an injunction, the court can impose a bond to be posted by the applicant to guarantee the defendant where it transpires that the injunction was wrongly imposed.

Where the injunction is finally revoked, the defendant can start an action to claim damages suffered for the activity he could not carry out as a result of the injunction.

 

Final remedies

35. What remedies are available against a patent infringer?

Permanent injunction

It is generally required by the case law that a risk of future infringements exists in order to justify a permanent injunction. However, it is disputed whether such a risk still exists where the infringer has voluntarily ceased the infringing activities, or whether at least a formal undertaking by the infringer is required in order to exclude the risk or repetition.

A permanent injunction, as a preliminary injunction, is usually coupled with a monetary penalty payable by the defendant in the case of non-compliance or delay in compliance.

No specific rules apply for particular subject matters or for particular claimants. However, some court precedents have limited access of non-practising entities to interim measures, especially where the patent enforced is not the object of licensing policies and there is no evidence of serious and irreparable damage being caused. These concerns are typically overcome with respect to permanent relief, which does not require evidence of serious and irreparable damage in order to be granted.

Sometimes the injunction is quite broad in scope and refers to any infringement of the patent, but in most cases it refers to specific items.

The injunction, as well as the removal from the market, whether final or provisional, can be ordered against the infringer or any intermediary who is party to the proceedings and whose services have been used to commit the infringement. Therefore, only suppliers and customers that were party to the proceedings will be bound by the injunction.

Monetary remedies

When assessing damages, the court must take into account all appropriate elements, such as:

  • The negative economic consequences, including lost profits, which the rightholder has suffered.

  • The profits made by the infringer.

  • Where appropriate, elements other than economic factors, such as the non-monetary prejudice caused to the rightholder by the infringement (for example, damage to commercial reputation, tarnishing, defamation, other moral damages).

The court can also set damages as a lump sum, in which case the lost profits are determined in an amount that cannot be less than the royalties which would have been due if the infringer had obtained a regular licence at market rates. In determining the royalty to be paid by the infringer, recent case law has in several instances applied an increased royalty, usually by half, as compared to usual market standards, to take into account all the costs normally borne by a regular contractual licensee (for example, advertisement obligations, quality controls, minimum guaranteed royalties and so on).

In any event, the rightholder may request the reversion of profits made by the infringer as an alternative to recovery of the lost profits or in addition to them in as far as they are in excess of lost profits. Punitive damages are not available under Italian law.

Normally liability and quantum are assessed together even if, on rare occasions, the courts issue an interlocutory decision on the liability and then examine the quantum and issues in a second decision on the amount of damages. In such cases, on a party's motion, the court may also issue a provisional order of payment, to the extent to which damages are already proved, together with the interlocutory decision on liability.

Delivery up or destruction of infringing goods

Infringing goods, as well as the means that are univocally used to produce them, may be delivered up to the rightholder.

Infringing goods may be destroyed if there are no specific reasons against this. In particular, destruction of the infringing goods cannot be ordered if this is prejudicial to the national economy, in which case the patent holder is only entitled to damages. In addition, if the infringing goods may be lawfully used once modified, the court may issue a provisional recall order to allow such modifications and provide, instead of their destruction, for their use on the market in the lawful modified form.

Publication of the decision

The court can order the publication of the decision on one or more newspapers or internet websites, as the case may be, in full or in part, with costs to be borne by the losing party.

Recall order

A recall order of the infringing goods may be issued not only against the infringer, but more generally against all persons and entities having control over the goods and all intermediaries. The prevailing opinion requires that these subjects be parties to the proceedings, or be at least bound by the decision, as is the case of third parties who acquired the goods during the proceedings.

If the infringing goods may be lawfully used subject to their modification, the court may order their provisional recall with the possibility to put them back on the market when modified, instead of their final removal.

Declaration of infringement and validity

The declaration of infringement and validity of the patent will be the main finding of the court prior to issuing all related orders of permanent injunction, recall from the market, delivery up or destruction, damages, and others, as the case may be.

Others

In particular cases where the patent is about to expire, the court may, on the request of its owner, order the seizure of the infringing goods and of their production means up to expiry of the patent. In this case, the rightholder may request that the seized goods be delivered up to him at a price to be agreed upon by the parties or determined by an expert.

 

Appeal procedure

36. What avenues of appeal are available for a defeated party and under what conditions?

The appeal against a first instance decision must be lodged before the Companies' Court section of the competent court of appeal within 30 days from service of the decision to the losing party or, in default of service, within six months from publication of the decision (the duration of this time limit is suspended during the month of August).

The appeal against a preliminary measure must be filed before a panel of three judges from the same Companies' Court within 15 days from communication of the order.

Both the appeal against a first instance decision and the appeal against a preliminary measure involve a new consideration of the facts and the points of law of the first instance decision, with the exclusion of new claims. However, whereas an appeal on the merits implies stringent limitations on the possibility to file new evidence, the appeal against a preliminary measure allows the filing of new documents.

Appeal proceedings on the merits typically last from 12 to 18 months.

Appeal proceedings on preliminary relief typically last from one to two months. Additional time may be needed if technical expertise is resorted to in the course of the appeal proceedings.

 

Litigation costs

37. What level of cost should a party expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and appeal proceedings?

Litigation costs largely depend on the complexity of the case, which in patent litigation plays a major role. Under normal circumstances, legal costs for an action on the merits can vary from EUR50,000 to EUR150,000 in the first instance and from EUR30,000 to EUR70,000 in the second instance. Costs for preliminary proceedings can vary from EUR15,000 to EUR50,000 in the first instance and from EUR10,000 to EUR30,000 in the second instance. The above costs do not include the fees for technical experts, if any, or other costs (such as prior art searches, translations, travel, and others).

As a general rule, the winning party is entitled to recover its legal costs from the losing party, but this is a matter where the court has a large discretionary power. In particular, the court freely liquidates the amount of legal costs to be reimbursed by the losing party (which are usually much lower than the actual amount of legal costs borne by the winning party) and may set off legal costs between the parties if particularly complex the issues are involved. In general, only normally 20% to 40% of actual legal costs are recovered by a winning party. However, in recent times courts have started to liquidate costs more generously in favour of winning parties.

 

Reform

38. What are the important developing and emerging trends in your country's patent law?

Patent law, and more generally IP law, has been recently affected in a significant way by new legislation, providing for a unique body of substantive rules and significant procedural peculiarities. Current discussions are mainly focused on the new legislation and its further amendments, their interpretation and effects.

Certainly, implementation of a number of EC directives, in particular Directive 2004/48/EC on the enforcement of intellectual property rights (Enforcement Directive), has provided much more effective means of gathering information from the infringer and liquidating damages, making it much easier to counter any unlawful activities affecting IP rights.

Recent amendments to the law have been aimed at ensuring the consistency and effectiveness of procedural rules governing preliminary relief (among which are description orders, which are now issued within fully contradictory proceedings and can be the basis for additional measures), clarifying debated questions (such as the possibility, now expressly provided under the law, to obtain a finding of non-infringement by way of preliminary relief), or encouraging settlement between the parties (this being the aim of the possibility to anticipate technical expertise on patent infringement and damages, irrespective of proceedings on preliminary relief or on the merits).

Moreover, it has been noted that the Companies' Courts are much more efficient in acting quickly and liquidating substantial damages.

It could be concluded that, under the new provisions, Italy has become a very interesting forum for patent litigation.

New legislation has been enacted in the last few years in respect of patent law through the Code of Industrial Property, which entered in force on 19 March 2005 and has been amended since, both by implementing the Enforcement Directive and by further adjusting the existing rules and enhancing means of enforcement and defence.

In the next years, major developments in patent litigation will occur, also in Italy, with respect to the Unitary Patent and the Unified Patent Court System, to which Italy will be a full participant.

 

Online resources

Normattiva

W www.normattiva.it/

Description. Normattiva is a database published by the Istituto Poligrafico e Zecca dello Stato SpA allowing free access to statutes in force in Italy. The database is up-to-date but unofficial and only in the Italian language.



Contributor profiles

Massimo Sterpi, Partner

Studio Legale Jacobacci & Associati

T +39 0642013332
F +39 0642870022
E msterpi@jacobacci-law.com
W www.jacobacci-law.com

Professional qualifications. Italy, lawyer. Admitted to the (Turin) Bar in 1996 and to the Supreme Court, Italy, in 2008.

Areas of practice. Intellectual property (trade marks, designs, copyright and patents); art law.

Non-professional qualifications. Graduated in law with honours from the University of Turin in 1989 and with a Post-graduate Diploma in UK and EC Law of Copyright and Related Rights from King's College, London, in 2000.

Recent litigation and transactions. Massimo has recently worked on a major case involving alleged infringement of patents, copyrights and trade secrets between two major international players in the transportation field. He also has experience in litigation before the CJEU.

Professional associations/memberships.

  • WIPO's IP Arbitration and Mediation Centre's List of Neutrals and List of Art and Cultural Heritage Neutrals.
  • Former Chair of IBA's Committee on Art, Heritage Law and Cultural Institutions.
  • Co-founder and Vice-President of the French-Italian Association for Design Protection.
  • Member of the Advisory Board of the Venice Peggy Guggenheim Collection, of the Board of Fondazione Prada.
  • Member of the Italy-USA Relations Council.

Publications.

  • Patent Litigation - Reference Series, The European Lawyer, 2006.
  • Trade Mark Litigation - Reference Series, The European Lawyer, 2007.
  • Copyright Litigation – Reference Series, The European Lawyer, 2010.
  • The fine line between art and design, Managing Intellectual Property, November 2014.

Luca Ghedina, Partner

Studio Legale Jacobacci & Associati

T +39 0112413087
F +39 011859804
E lghedina@jacobacci-law.com
W www.jacobacci-law.com

Professional qualifications. Italy, lawyer. Admitted to the (Turin) Bar in 2001.

Areas of practice. Intellectual property (patents, trade marks, design, copyright, unfair competition). Luca has developed significant expertise in patent litigation, software, new technologies and internet-related issues, geographical indications, and anti-counterfeiting.

Non-professional qualifications. Luca graduated in law with honours from the University of Trento in 1995, holds a Post-graduate Course in International Trade Law from the University Institute of European Studies, Torino, 1996, and an LLM in German Law from the University of Regensburg, Germany, 1998.

Recent litigation and transactions. Luca has been recently involved in major multi-jurisdictional patent litigation cases primarily in the areas of the automotive industry, the railway industry and the steel industry. Luca also has experience in litigation before the CJEU and General Court.

Languages. Italian, English, French, German, Swedish

Professional associations/memberships. GRUR and VPP (German associations on Intellectual Property).

Publications.

  • Patent Litigation - Reference Series of The European Lawyer, 2006 and 2012.
  • Several contributions to Recht & Steuern – Norme & Tributi, Newsletter of the Italian-German Chamber of Commerce, in the area of Pharmaceuticals, Medical Devices and Cosmetics.

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