Patent Litigation 2018 Comparisons

Last Updated October 12, 2018

Contributed By LGV Avvocati

Law and Practice


LGV Avvocati has considerable experience in matters concerning patents and utility models, together with highly specialised experience in litigation. LGV deals with patents and portfolios of patents in every sector of technology, from the traditional areas of mechanics (textile machinery, machine equipment, automotive, fluid dynamics, installations, and workstations) to modern technologies (microchips, optical supports, and electronics in general). Based in Milan, the firm has experience with respect to pharmaceutical products, medicinals, diagnostics, biotechnology, biomaterials, water filters, telecommunication systems, SIM cards and consumer electronics. Considering the commonly adopted practice of protecting the same invention in several countries and regions (European patent, international extension, etc), patent litigation often involves more than one jurisdiction – LGV has relevant experience in this field and is in a position confidently to develop and co-ordinate litigation strategies within a transnational framework.

Under the Italian legal system inventions can be protected as patents for industrial inventions, utility models and know-how. These forms of protection are all based on statutory law: the principal source of law is the Code of Industrial Property (Statutory instrument No 30/2005, hereinafter “Industrial Property Code” or “IPC”), which re-organised all prior legislation on industrial property, also providing for common principles on certain aspects of protection. The articles related to know-how (Articles 98 and 99 of the IPC) codify the case law developed by Italian courts.

The grant procedure for patents and utility models requires an application to be filed at the Italian Patent and Trade Mark Office (namely, the Ufficio Italiano Brevetti e Marchi, hereinafter “UIBM” or “the Office”). A formal examination is carried out and if all requirements are met a substantive examination of the requirements of novelty and inventive step follows. The search for prior documents is carried out by the European Patent Office (hereinafter EPO), on the basis of a convention between the UIBM and EPO. The UIBM issues a statement, by which it either grants the invention or requests changes.

After a period of not more than 18 months from the filing date of the application, the UIBM makes the application and the relevant attachments accessible to the public. The applicant may request a prior publication but not before 90 days from filing. Once publication has occurred the applicant may start proceedings requesting certain remedies, such as search orders or injunctive relief. The issuing of a court judgment requires the prior grant of the patent.

In relation to know-how there is no grant or registration procedure. Protection arises automatically pursuant to law and, more precisely, if the following requirements are met:

  • the information should be secret in that it is not, as a whole or in the exact configuration and combination of their components, generally well-known or easily accessible for experts and operators in the field;
  • the information should have an economic value due to it being secret;
  • the information should be subjected (by those who legitimately control them) to measures which may be deemed reasonably adequate to keep it secret.

The granting procedure for patents and utility models usually lasts from two to three years. However, the Italian system grants anticipated protection: see 1.2 Grant Procedure above. According to a general rule (Article 201 of IPC) representation by a patent attorney is not mandatory before the procedures of the UIBM. However, representation is the rule, not the exception. The average cost is around EUR2,500/ EUR3,000 for each application but costs also depend on the length of the patent; a EUR45 fee is due for each claim beyond the tenth claim.

Patents last for 20 years, starting from the date of filing of the application. Their duration cannot be extended (for exceptions and further details please see 1.6 Further Protection After Lapse of Maximum Term below). The duration of a utility model is ten years from the date of filing of the application. The duration of know-how is potentially unlimited provided the above-described requirements are met.

Article 66 of IPC, applicable both to patents and utility models, provides for the exclusive right to implement the invention and obtain a reward therefrom in the country’s territory. Italy is a contracting state of the European Patent Convention and of the Unified Patent Agreement. The mentioned rule implements the harmonised substantive law. A product claim confers the right to prevent unauthorised third parties from producing, using, putting on the market, selling or importing for such a purpose. A method claim confers the right to prevent third parties from applying this method, as well as from using, putting on the market, selling or importing for such a purpose the product directly obtained from the method at issue.

The owner of know-how has the right to prohibit third parties, subject to his or her consent, from acquiring, disclosing to third parties or using that information and experience in an unauthorised manner, except for cases in which the third party has obtained it in an independent manner by another third party.

These principles underlie the right to obtain an injunction as well as to claim damages. For further details on remedies please see 2.1 Actions Available Against Infringement and 6.1 Remedies for the Patentee below.

The owner of patents should also pay the fees after the grant of the patent starting from the time when the patent reaches the fourth anniversary of the filing date. From then on, fees are due annually. Owners of utility models pay five annual fees when filing the application. After five years the fee for another five-year period is due.

With regard to further protection after the lapse of the maximum term, Supplementary Protection Certificates (hereinafter SPCs) may be granted for specific product sectors. In the past, SPCs were regulated under Italian Law No 349 of 19 October 1991. Today, in Italy, EU Regulations No 469/2009, No 1901/2006 and No 1610/96 apply, providing additional protection for specific pharmaceutical and plant-protection products which have been approved for sale and are covered by a national patent.

According to the previous Italian national law, the maximum limit amounted to 18 years. With the expiry of SPCs issued under the Italian national law, such legislation may be considered to have lost some relevance. According to the principle set out in the EU Regulations, an SPC may receive any product that is protected by a national patent and the commercialisation of which is subject to specific authorisation and does not already have a certificate. The SPC confers the same rights as those provided for by the basic patent.

In Italy, the competent authority before which to lodge the application is the UIBM. The application shall be lodged within six months of the accomplishment of service of the marketing authorisation. The SPC takes effect when the basic patent expires, and is valid for up to five years. In the case of pharmaceuticals, the SPC may be extended once for six months if a paediatric investigation plan has been prepared. The overall protection a patent and an SPC can provide, and thus the sum of the patent term and the added exclusivity period, cannot exceed 15 years from the granting of the first marketing authorisation.

During grant proceedings before the UIBM, third-party observations are not allowed and third parties do not have the right to participate in the proceedings.

In case a decision of the UIBM totally or partially refuses the grant of a registered intellectual property right, such as patents or utility models, an appeal may be filed with the Board of Appeal within 60 days from the date of receipt of the communication of the decision. Against the decisions of the Boards of Appeal which are issued in the form of a formal judgment, appeal to the Italian Supreme Court (Corte di Cassazione) is admissible.

Patents and utility models lapse in the case of failure to pay annual fees. A possible remedy is to pay a delay charge (EUR100,00) within six months from the expiry date. After this time limit the UIBM serves notice on the interested party through registered mail informing said party that the payment of the due fee has not been settled within the prescribed deadline. After 30 days from the mentioned communication, the UIBM, via specific annotation on the patent registry acknowledges the lapse of the patent for non-payment of the annual fee, and consequently publishes the notice of lapse in the Official Bulletin.

The owner of a technical intellectual property right may initiate criminal or civil proceedings and, where importation from abroad is concerned, proceedings before the customs authority. In relation to civil proceedings, the owner may act by commencing interim proceedings or proceedings on the merits. Possible requests include injunction orders providing for a penalty (in the case of violation of the injunction to be paid to the right-owner), recall from the channels of commerce, the seizure and destruction of infringing goods and publication of the Interim Court order at the costs of the defendant. The same remedies may be obtained in proceedings on the merits, on top of damages. (See also 6.1 Remedies for the Patentee below.)

The above-mentioned remedies apply also in case of unlawful use of know how.

The Italian system does not provide for opposition and/or post-grant proceedings for Italian national patents or utility models. Thus, technical intellectual property rights are to be cancelled by an invalidation action before the competent Italian courts. The Italian system provides also for the possibility of requesting the grant of compulsory licences; see 3.4 Defences Against Infringement below for details.

Moreover, an inventor whose invention had unlawfully formed the object of a third-party application may start actions for the obtainment of an assignment. 

An interest to act is a general requirement for taking any judicial civil action. The threshold is not particularly high, and a commercial interest is sufficient.

Intellectual property matters fall within the jurisdiction of 21 specialised IP divisions established within the first instance courts (ie, Tribunale delle Imprese – Enterprise Courts) and within those of second instance (ie, Corte d’Appello – Courts of Appeal). If the matter involves a company with a registered office outside of Italy, jurisdiction over the dispute is restricted to 11 of the aforesaid divisions, most of which are located in major Italian cities and include the most experienced courts such as Milan, Turin, Rome, Venice and Naples. This concentration aims at enhancing the attractiveness of the judicial system for foreign companies. The Supreme Court – Corte di Cassazione – located in Rome, is the final instance court and does not have a specialised division for intellectual property matters which, therefore, are not differentiated from other legal controversies in final instance proceedings.

In principle, Italian law does not require the sending of a communication to the counterparty prior to commencing proceedings nor, as far as intellectual property issues are concerned, is there any need to engage in mediation (see also 9.1 Type of Actions for Intellectual Property below). Thus, in relation to intellectual property matters, there are no prerequisites to filing a lawsuit. However, if exercising exclusive rights deriving from a standard essential patent, the plaintiff has to follow the procedure established by the case law of the European Court of Justice, including that on pre-trial communication and negotiations. 

Nearly all intellectual property-related matters are of the competence of the Enterprise Courts of first and second instance where representation by a lawyer is mandatory. In proceedings before the Supreme Court, the attorneys' special admission is required.

The Italian system provides the possibility for the holder of an industrial property right (and therefore also of a patent or utility model) to request the court to issue an urgent injunction in the course of interim proceedings. An urgent injunction may be granted when the relevant requirements are fully met, namely the fumus boni iuris (ie, the likelihood of infringement of a valid right) and the periculum in mora (ie, the danger of an imminent and irreparable prejudice to the claimed right deriving from waiting for the issuing of a judgment in proceeding on the merits).

Proving the fumus boni iuris requirement for the purpose of an interim patent injunction involves producing evidence concerning both the validity of the patent itself (for example, the patent validity was previously confirmed in other Court or – in the case of European patents – of administrative proceedings) and the alleged infringement (in this case, elements as to the characteristics of the counterparty product or method). As for the periculum in mora, Italian courts often find it to be self-evidently existent in so far as infringement would, in any event, determine irreparable damages that may not be subsequently quantified. The wording used by the law seems to favour this interpretation given that Article 131 of IPC refers to the possibility of requesting the injunction with regard to “any imminent infringement of the right and continuation or repetition of the infringements”. In contrast, some other decisions have held that access to interim protection also requires that the rights-holder has not tolerated the infringement for too long, without however establishing clear timeframes. 

In rare cases, courts have balanced the interest of the parties, thereby exercising discretion and considering further aspects, other than that of prolonged acquiescence. The judge may also require from the right-holder the payment of a deposit upon issuing of the interim measures. The payment of the deposit may be ordered by the judge who shall evaluate the circumstances even without a request by the defendant. The deposit is aimed at satisfying compensation of damages that the plaintiff/right-holder may cause to the defendant as a result of the interim requests. This measure, however, is rarely applied.

While in the past potential opponents sought protection by filing protective briefs, today they are no longer admitted by Italian courts. However, a potential opponent may turn to two fundamental legal instruments. Firstly, the commencement of proceedings on the merits for declarations of non-infringement of patents or utility models. Secondly, the start of interim proceedings for the same purpose. Interim actions for ascertainment of non-infringement are expressly regulated under Article 120 paragraph 6 bis of ICP. In both cases, the right-holder may react with counter-interim requests.

In general, Italian law does not provide any time limit for requesting a declaration of invalidity or for the ascertainment of infringement of a patent. Provided that the damage suffered by the claimant occurred before the expiry of the patent, actions aimed at obtaining the payment of damage compensation are still possible after the expiry of the 20-year protection period. However, with respect to damages, the ordinary five-year period of statute of limitation provided for under the Italian Civil Code applies.

Moreover, it should be noted that the measure of the civil search may also be granted to the rights-holder even after the expiry of the patent; it is admissible to acquire evidence on sales such as invoices and other accounting documentation that may be useful for quantifying the damage occurred before expiration of the patent.

The Italian legal system provides for measures for preserving and obtaining evidence from the counterparty or a third party. These may be granted in favour of owners of all industrial property rights including patents, utility models and know how. The most used and important measure is the civil search (Article 129 of ICP). Generally, the application is filed before the start of the proceedings on the merits. Competent for issuing the seizure order is the same Court that has competence for the proceedings on the merits.

The purpose of the civil search is to provide evidence of the infringement or, more precisely, to acquire – via operations carried out by the bailiff, who is assisted by a court-appointed expert – a definitive assessment of the characteristics of the allegedly infringing product or method. The aforesaid acquisition may occur via a description in the operation minutes and attachment to the minutes of photographs, videos as well as other electronic files found on the defendant information technology systems. The search of the goods may also concern the drawings and other information which may prove useful towards acquiring evidence of the infringement. It may also cover objects or documents held by third parties (for example, the allegedly infringing goods) and commercial advertising and accounting material that may be attached to the minutes of the operation for the purpose of providing evidence of the amount of damage suffered by the rights-holder. In general, upon the acquisition of elements such as invoices, bills of transport, and so on, such documentation is inserted in a sealed envelope in order to protect know-how belonging to the defendant. These measures are usually requested and granted ex parte, thus leaving the defendant unaware of the search and preventing the danger that it may disperse the evidence. A requirement is the existence of an actual danger of evidence dispersion.

Another remedy is that provided under Article 121bis of ICP (described as "right to information") which provides that, in case of large-scale infringement or piracy, the possibility is given to the court – also in the course of interim proceedings – to order the defendant or any other person who may have knowledge of the relevant facts, to provide information on the origins and the distribution network of the goods or the services that infringe the patent, including names and addresses of manufacturers and of all those who are a part of said distribution network, as well as quantities and prices applied. It must be noted that such measure is scarcely used in practice.

Finally, attention should be given to the order for exhibition of evidence, directed at the alleged infringer or even a third party, and which may be issued by the court upon request by the claimant. Such order of exhibition may concern accounting and commercial documentation (that, for example, has not been covered by a prior civil search) and is generally requested during proceedings on the merits.

In principle, ordinary procedural rules apply to intellectual property proceedings and the requirements of the lawsuit are the same as those for other civil proceedings: initial pleadings must permit the counterparty to understand fully the subject-matter of the request. Specific defences, such as the application of a statute of limitation, and the respective arguments are to be introduced at the latest with the first written pleading following the first oral hearing. Legal arguments in support of defensive requests that have already been filed may always be added. (See also 5.1 Special Procedural Provisions for Intellectual Property Rights below.)

The Italian system does not permit representative or collective actions (such as class actions) for intellectual property rights proceedings.

While the notion of abuse of a right is not expressly codified in the Italian Civil Code nor in the ICP, the Italian civil procedural code provides for a rule on reckless litigation. The rule does not primarily address the rightfulness of an action as such but the specific modalities of the action and its execution. Of particular importance are the circumstances under which ex parte measures (such as seizure and search orders) are carried out, even more so if an industrial property right turns out to be invalid or not infringed.

Relevant restrictions may derive from antitrust law, both with regard to filing and protection application strategies and to the assertion of rights. A patent-filing strategy, exclusively aimed at purposefully prolonging patent protection beyond the protection period, has been declared anti-competitive and considered a sub-category of abuse of rights. The assertion of standard essential patents, lying at the intersection between patent and antitrust law, is also of importance: Italian courts have quite strictly applied the mechanisms provided for by the case law of the European Court of Justice in order to safeguard free competition to the detriment of patent-holders.

Italian law provides that an action for infringement of a patent may be commenced by the exclusive licensee, without necessarily involving the rights-holder. However, this is subject to the existence of a licensing agreement which may be proven through a variety of means. As for non-exclusive licensees, there is an ongoing debate as to whether such a party has a right to file an action for infringement. The case law currently appears to be split on this issue: while a recent decision of the Italian Supreme Court has defined somewhat broadly the subjects entitled to assert exclusive rights, the UPC Agreement, ratified by Italy, mentions only the holder of an exclusive licence as the subject entitled to file an action after having informed the holder.

In the past, only direct infringement was codified in the IPC while indirect infringement was based on case law only. With Italy’s ratification of the Unified Patent Court Agreement, Italy has introduced a specific rule on indirect infringement that resembles the correspondent rule of the UPC Agreement: a patent confers the right to prevent any unauthorised third party from supplying or offering to supply any unauthorised person with means, relating to an essential element of that invention, for putting it into effect therein. This applies only when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect.

An exception regards staple commercial products. However, even the supply with staple commercial products may be inhibited if the third party induces to perform any act of direct infringement. Now the IPC grants the right-owner the same remedies described above against both kinds of infringement; as to remedies, see also 6.1 Remedies for the Patentee below. In relation to the granting of seizures and destruction orders, a more cautious practice is expected as to indirect infringement.

The claims define the limits of the scope of protection, but description and drawings serve as means of interpretation thereby balancing the property protection right of the owner and the need of legal certainty. Single-claim characteristics which are not reproduced in a challenged product may be relevant if considered equivalent to those provided for in the claim. Though infringement by equivalents is now expressly provided for under the IPC, the relevant rule states that such equivalent elements shall be held in “due consideration” when deciding on infringement, which therefore leaves room for interpretation.

Italian law provides a general rule on exhaustion, applicable to all IPRs. It provides a specific rule on compulsory licences: if the patent-owner after three years from the patent-granting date, or after four years from the application filing date, has not at all or not sufficiently put the invention into effect, a compulsory licence may be granted to any interested third party that formulates such a request. The same applies in the case of suspension for more than three years. Also, if the defendant holds patent rights this may lead to the grant of a compulsory licence: if an invention of a patent cannot be used without prejudice to the rights deriving from a patent granted following an earlier application, a compulsory licence may be granted as long as the later invention relates to a technical progress with considerable economic relevance. 

As to laches: in some cases, Italian courts have rejected interim motions in cases where a considerable time has passed by from the time when the infringement was known, and the action commenced. In some cases, six months have been considered a long time for not undertaking action (see 2.6 Interim Injunctions above.) In proceedings on the merits, damages deriving from the harmful event that took place more than five years prior to the lawsuit are excluded according the general rule on the statute of limitations of the Italian Civil Code.

Court experts play a very important role in proceedings regarding technical inventions, both in interim proceedings and proceedings on the merits. In almost all cases technical court experts are appointed to decide on validity and infringement of rights. Moreover, very often experts in accounting are appointed to calculate the amount of damages to be awarded to the right-holder. Whenever a court expert is appointed, parties may appoint their own experts which have the right to assist to the operations and to file pleadings. The expert, before filing his or her definitive expert statement, shall ask the experts of the parties to comment on a draft. This mechanism is a safeguard of the fundamental procedural right “to be heard.”  Judges are not bound by the court expert’s opinion, but a differing opinion shall be adequately motivated.

There is no specific procedure for construing the terms of the patent’s claims. The judge or, more likely, the court expert may request the parties to address specific aspects regarding validity and infringement but usually all validity and infringement-related aspects are dealt with in the same pleadings.

Italian patents and utility models, once granted, can be revoked only by the competent courts and not by the UIBM. The IPC, in accordance with the European Patent Convention of which Italy is a contracting state, has a strict rule on a closed number of specific invalidity reasons. A patent can be cancelled or declared invalid only in the case of a lack of novelty or of inventive step, industrial application, or if the invention’s exploitation is contrary to public order or morality. Furthermore, a patent can be revoked:

  • if the invention has not been described in a sufficiently clear and complete manner so as to allow an expert to implement the invention;
  • if after modifications during the granting phase or, in the case of European patents, during the opposition proceedings before the EPO, the patent’s range of protection extends beyond that of the initial application;
  • if the patent-holder was not entitled to obtain it and the entitled subject did not claim the patent’s ownership.

If the reasons for invalidity concern only parts of the patent, it is possible to start an action for a declaration of partial invalidity. In this case the patent will not be declared void in its entirety but only partially so.

In 2010 the Italian legislator adopted a rule that resembles that of Article 138 paragraph 3 of the European Patent Convention; this now allows a patent-holder to submit to the court, at any time and in any instance of pending invalidity proceedings, a rewording of the claims, as long as it does not exceed the original contents of the patent application nor extend its original scope of protection. Although the provision states that the rewording request may be presented at any time, the general procedural rules have to be complied with: the request must be filed before the submission of the definitive requests. Moreover, a specific form requirement must be met: the rewording request must be signed by the legal representative of the holder. 

Infringement and invalidity actions are heard together before the same court and within the same proceedings. Usually the same court expert decides both on validity and on infringement. Therefore, both the court expert’s opinion and the decision address both issues at the same time. This allows the court expert and the court to apply the same level when it comes to assessing notions such as the inventive step. By not splitting up invalidity and infringement proceedings the system allows a defendant to react with a counterclaim of invalidity in infringement proceedings.

With regard to intellectual property rights proceedings, the specialised Enterprise Courts have competence; for details see 2.3 Courts With Jurisdiction above. Court fees before the Enterprise Courts are doubled with respect to the ordinary courts costs. In line of principle, the ordinary rules of the Civil Procedure Code apply to intellectual property rights proceedings and the requirements for filing a lawsuit are the same as for ordinary proceedings (see also 2.10 Initial Pleading Statements above). However, some special procedural provisions regarding the activity of the court concern (i) the collection of evidence and information, (ii) the available remedies, (iii) see first paragraph of 6.1 Remedies for the Patentee below, and (iv) the burden of proof. In particular:

  • Court experts may also receive documents from one of the parties after the expiry of the deadlines for filing documents, provided that these documents are communicated to the other party. This rule does not apply in other civil proceedings.
  • The ICP provides the remedies provided for under the EU Enforcement Directive (2004/48/EC): at the pre-trial phase, the right-owner may ask for protective measures aimed at acquiring evidence of the alleged infringement that will be used in the trial itself and aimed at preventing the circulation of infringing goods. The rights-holder may consider either a civil search or a seizure of the allegedly infringing goods. The seizure of goods, in addition to acting as a judicial measure for acquiring evidence, also prevents the circulation of infringing goods. Both remedies may be obtained by the claimant ex parte when delay may cause irremediable harm to the rights-owner or when the presence of the opposing party may prejudice the execution of the civil search or seizure. If a party has provided serious evidence supporting the reasonableness of his or her claims and if he or she has identified documents, elements or information available to the opposing party, the judge may order the opposing party to exhibit documents/elements or to communicate for the relevant information. These may also include elements necessary to identify the people involved in the production and distribution of the products or services that allegedly infringe the industrial property rights. In the case of infringement committed on a commercial scale through acts of piracy, the judge may order, upon request by a party, the communication of banking, financial or commercial documents under the control of the opposing party.
  • Having ascertained the existence of an infringement, the judge may apply a series of civil sanctions against the infringer, such as injunctions with application of a penalty and payment of damages, removal of goods from commerce, seizure, destruction and publication of the interim court order or of the judgment in newspapers at the infringer’s costs.
  • A presumption of validity applies in favour of the holder of registered rights such as patents and utility models.

The case is decided by professional judges and not by a jury. In 2003, specialised sections for IP matters were established, and after receiving an increased range of competences were renamed Enterprise Courts. Judges are specialised in all IP matters and specialisation is not limited to a specific field of intellectual property. Accordingly, judges do not have a technical background and in technically related matters court experts are usually appointed. Though judges are not bound by their opinions, these are of particular importance for the outcome of the proceedings. Only in specific incompatibility situations may parties request the court expert’s or judge’s substitution. No other instruments to influence the deciding body are provided for.

While for specific legal areas the claimant is obliged to attempt to settle the case out of court, a similar rule does not apply to the defendant. However, according to the general procedural rules, the judge shall submit a conciliatory proposal attempt during the first oral hearing or at a later stage prior to the decisive phase. The judge may also summon the legal representatives of the parties personally to a specific hearing in order to attempt the settlement of the case. The defendant cannot unilaterally request such a decision. He or she may, however, communicate their legal representative’s willingness actively to engage in settlement talks at such a hearing.

As a general rule, if proceedings on preliminary issues are pending, the court dealing with related issues shall stay proceedings before it until the preliminary issues have been decided by the other court in order to avoid differing decisions on the same preliminary issues. Therefore, and according to the case law, infringement proceedings should be stayed until the relevant pending validity proceedings are decided. However, as the Italian system does not separate validity and infringement proceedings, a stay of proceedings may occur, although not very often.

A patentee may obtain the injunctive relief that also provides for a penalty to be paid to the right-holder in the case of infringement of the injunction, and that provides for damages, attorney fees, removal commerce, seizure, destruction and publication of a court order or judgment at the defendant’s expense. The judge has discretion with regard to the granting of removal from commerce, seizure, destruction and publication of a court order or judgment. With respect to the granting of injunctive relief, the application of discretion is limited to particularly burdensome situations; see also 2.6 Interim Injunctions above. With respect to damages: the patent-holder must prove the existence of damages, namely actual damages and loss of profits. The ICP sets out the specific criteria for liquidating damage in the event of infringement, including lost profits of the patent-holder and the “benefit” gained by the infringer. Enhanced damages are possible where the infringement also amounts to a criminal offence. The claimant may request alternatives for the so-called “retroversion of gains” accrued by the infringer.

The judge may also quantify the damage in a lump sum and therefore exercise a certain level of discretion. In this case the lump sum shall at least amount to imposition of a possible licence fee to be measured with reference to the standard conditions that are applied in the relevant market ("licence analogy").

Most often, courts appoint accounting experts in order to determine the damages and indicate the criteria upon which such assessment must be carried out.

A prevailing defendant – in the event that the court rejects the infringement claim – may request the legal expenses; these include attorneys' fees, expert costs (if appointed) and court fees. The cost decision follows the so-called principle of prevalence. For example, where the defendant’s invalidity counter-claim is rejected but nevertheless infringement is rejected, a significant part of the expenses may be compensated between the parties. Furthermore, should the court accept the defendant’s claim that the counterparty commenced reckless litigation – for example, because the proceedings were started by the claimant who knew that his or her patent was invalid – the defendant may also receive compensation of damages. However, rules on reckless litigation are only rarely applied.

The Italian ICP contains a general section on remedies applying to all technical intellectual property rights. Thus, the above-described remedies apply to all the rights described under 1.1 Types of Intellectual Property Rights above.

The stay of injunction requires exceptional circumstances and, in most cases, stay requests have been rejected. The Italian legislator has repeatedly amended the respective provision of the Civil Procedural Code: on the one hand the threshold for granting a stay decision has been raised significantly; on the other hand, a valid reason for the grant of a stay decision is now the possibility that one of the parties has become insolvent.

Italian law does not provide for a special appeal procedure for intellectual property rights proceedings. This also applies to patent infringement and validity proceedings, which are governed by the Code of Civil Procedure general rules on appeals proceedings.

Italian Courts of Appeal review both the facts and points of law of the case. Nonetheless, the review is carried out within the limits of the appeal claims which the parties submit to the court. The appellant must accurately set out the grounds on which the appeal is based by indicating the parts of the first instance decision it wishes to challenge, the facts that the Court of Appeal should reconsider, the circumstances that determined an erroneous application of the law and an explanation as to why such circumstances are relevant for the decision. The respondent may file a cross-appeal that must also meet these criteria.

Before the Supreme Court, only points of law are considered in the proceedings. It should be noted in this regard that the Code of Civil Procedure provides a filtering system whereby appeals to the Supreme Court must fall within a matter that may be appealed – in particular: matters of jurisdiction, violation of rules on the competence of the courts, violation or wrongful application of rules and national employment agreements, invalidity of the final decision and/or judgment of the proceedings, as well as cases in which the prior instance judges failed to consider a crucial fact for the lawsuit that was disputed between the parties.

With only a few exceptions, sending of a cease-and-desist letter is not mandatory. However, if the patent-owner is interested in approaching the infringer with a cease-and-desist letter aiming to find a prior-trial settlement, the respective attorney costs arise. In order to gather evidence of the infringement, rights-owners generally carry out a test purchase (if possible) or some other sort of investigation. In particular, for requesting the grant of further measures aimed at the collection of evidence such as civil search orders, patent-owners often file a technical brief on the infringement of the patent by the contested product. In these cases the technical consultant costs also arise.

According to the general rule, the prevailing party has the right to receive the reimbursement of court costs, as well as the costs for the activities of court experts, the attorney fees and the party expert fees. However, often the costs determined with the decision do not amount to all of the effective costs. During the proceedings the parties have to pay in advance the costs for the measure requested. Therefore, in infringement proceedings the plaintiff has to pay in advance not only the court costs but also a part of the costs for the activities of the court expert. 

Unlike other legal matters that may require a mediation procedure to be carried out before pursuing legal action before the courts, with regard to intellectual property cases engagement in any form of ADR before commencing proceedings is not mandatory. Therefore, it is quite an uncommon way of settling intellectual property cases, as long as the parties are not bound by a prior agreement. For example, in licence agreements or out-of-court-settlements, it is not uncommon for IP right-holders to provide for arbitration clauses. Where such clauses are chosen, the parties are required to engage in arbitration to settle the dispute, given that a court action, by virtue of such clause, would not be admissible.

Arbitration proceedings are governed by the general provisions under Articles 806 to 840 of the Code of Civil Procedure. The parties are allowed to enter into an arbitration agreement with regard to rights that they may assign or, more generally, dispose of (including the rights arising from a patent registration). Only unassignable rights such as personality rights, family law rights and others connected to criminal matters cannot form the object of an arbitration agreement.

The parties may choose the arbitrator, provided that he or she has legal capacity to act. If the parties cannot agree on who should be the arbitrator(s), the competent court would be called to intervene in such matter. Arbitration proceedings are directed by the same arbitrator(s) throughout, unless the parties have agreed upon a specific and different procedure.

The proceedings end with the arbitrator’s decision, which is immediately legally enforceable.

The assignment of an IPR does not require any specific form. However, such contracts are often made in writing, also for evidentiary reasons. The assignment does not require approval from the Office; however, the assignment must be registered at the UIBM in order for it to be effective towards third parties. If the assignment is not registered it is not invalid as such, but its effects cannot be claimed against third parties. The registration procedure is very formal and a high standard is required to guarantee authenticity of documents.

Italian law does not regulate a specific procedure for entering into an assignment agreement. No certain form is required. For the purposes of registration of the assignment, the Office requires the original or an authenticated copy of the assignment agreement. The relevant fees should also be paid the Office. Once these activities have been completed, the UIBM will register and publish the fact that the assignment has occurred.

Similarly, to assignments, Italian law does not provide for any specific form requirements applicable to licence agreements, which may be in writing or oral. Nor does a licensing agreement require approval from the Office.

Licences may be exclusive, sole or non-exclusive. With an exclusive licence the rights-holder confers on one licensee the right to utilise the patented technology, to the exclusion of the rights-holder. With a sole licence, the rights-holder and one other licensee are entitled to utilise the patented technology. With a non-exclusive licence, the rights-holder and several other licensees have a right to utilise the patented technology. Naturally, the aforementioned is a simplification and any agreement may combine different aspects of different types of licences.

Similarly to assignments, Italian law does not regulate a specific procedure for entering into a licensing agreement. For further information, please see 10.2 Procedure for Assigning an Intellectual Property Right above.

LGV Avvocati

Via Privata Cesare Battisti 2
20122 Milan (MI)

+39 02 54 06 97 1

+39 02 54 06 97 30
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LGV Avvocati has considerable experience in matters concerning patents and utility models, together with highly specialised experience in litigation. LGV deals with patents and portfolios of patents in every sector of technology, from the traditional areas of mechanics (textile machinery, machine equipment, automotive, fluid dynamics, installations, and workstations) to modern technologies (microchips, optical supports, and electronics in general). Based in Milan, the firm has experience with respect to pharmaceutical products, medicinals, diagnostics, biotechnology, biomaterials, water filters, telecommunication systems, SIM cards and consumer electronics. Considering the commonly adopted practice of protecting the same invention in several countries and regions (European patent, international extension, etc), patent litigation often involves more than one jurisdiction – LGV has relevant experience in this field and is in a position confidently to develop and co-ordinate litigation strategies within a transnational framework.


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