Patent Litigation 2024 Comparisons

The types of intellectual property rights for the protection of inventions, granted under the legal framework established by the Italian Code of Industrial Property (Codice della Proprietà Industriale) (the “Italian IP Code”), include the following.

• Patents: since Italy is a member of the European Patent Office (EPO), the correlated rules comply with the standards of the European Patent Convention.
• Utility models: Italy, like some other jurisdictions, provides protection for utility models but, differently from other juridical systems (like Germany), this is a way to protect technical solutions that do not properly fall within the definition of “invention” under the applicable patent law. 
• Supplementary protection certificates (SPCs): in Italy, according to the Regulation (EC) No 469/2009, SPCs extend the protection of certain medicinal and plant protection products by providing an additional period of exclusivity beyond the expiration of a patent.

There are also additional intellectual property rights for the protection of inventions, used, however, to a lesser extent, such as:

• exclusive rights for new plant varieties; and
• topographies of semiconductor products.

It is also worth mentioning that know-how (falling within the definition of trade secrets) is regulated within the Italian IP Code and subject to the competence of the IP courts, even if it is not an exclusive IP right (as clarified by Directive (EU) 2016/943, recital 16). 

In Italy, the protection of inventions is primarily governed by statutory law: nevertheless, over time, court decisions and interpretations have played a significant role in shaping the application and understanding of IP law.

The grant procedure for the main IP rights can be summarised as below.

Patents

The process of a patent application begins with the filing of its constituent documents (description, claims, any drawings), which must be drafted according to established criteria. 

The Italian Patent and Trademark Office (UIBM) conducts a preliminary administrative and technical examination to check that the documents are complete and the filing fees have been regularly paid. The UIBM also checks that the invention does not fall within the exceptions to patentability. If this first stage of examination is successful, the application is subject to a prior art search.

In Italy, the EPO is responsible for drawing up the search report, which is free of charge for the Italian applicants and accompanied by a written opinion that involves assessing the novelty, inventive step and commercial applicability of the claimed invention (requirements for patentability). The search report and written opinion are usually drafted within six to eight months from the application date and sent to the application owner, who, based on these results, may consider whether to extend the patent application abroad within 12 months from the filing date of the national application by availing the user of the right of priority. Following the receipt of the search report, the user is entitled to submit a reply containing observations or any amendments to the description and/or claims to the UIBM within three months after the expiry of the 18 months of secrecy of the application.

If the application meets all the requirements, including the patentability criteria, a patent will be granted. Upon grant, a patent certificate is issued, giving the patent holder exclusive rights to the invention for a specified period. 

Utility Models

Like patents, the process starts with the filing of a utility model application with the UIBM. Unlike patents, utility models in Italy are generally granted without any detailed assessment of its content: in addition, no prior search is conducted. Due to the very limited scope of protection granted and the absence of the free of charge EPO technical opinion, this kind of IP right is substantially not very useful. It can be only used as a remedy to ask a judge to convert the patent lacking inventive step into a utility model in the case of a litigation where the infringement is literal.

SPCs

To apply for an SPC, the patent holder must have a basic patent in force that protects an authorised medicinal or plant protection product and the product must have received a valid marketing authorisation. An application for an SPC is submitted to the UIBM within six months of receiving the marketing authorisation. The UIBM evaluates the application based on the criteria set out in Regulation (EC) No 469/2009.

Duration of Grant Procedure

The duration may vary depending on factors such as the complexity of the application and the workload of the UIBM. The process is completed within 24-25 months from the filing date, if successful, with the granting of the IP right or, if not, with the rejection of the application.

Need for Representation

It is possible to file patent, utility model and SPC applications without legal representation.

Average Costs

Filing fees vary depending on whether the patent application is for an invention or utility model. 

For patents, there is a basic fee of EUR50 for online filing, while it is between EUR120 and EUR600 for paper filing, depending on the number of pages in the application. In both cases, there is an additional fee of EUR45 for each claim beyond the tenth. A fee of EUR200 is also required for the English translation of the claims, if they are not filed by the applicant, as it is an essential document that forms part of the patent specification to be sent to the EPO for the prior art search.

For utility models, there is a filing fee of EUR50 for electronic filing, and EUR120 for paper filing, regardless of the number of pages and the number of claims.

Patents

The standard term for a patent in Italy is 20 years from the filing date of the patent application. 

Utility Models

Utility models have a maximum term of ten years from the filing date of the utility model application. 

SPCs

The term of an SPC is calculated based on the time that elapses between the filing date of the basic patent application and the date of the first marketing authorisation for a medicinal or plant protection product, minus five years. However, the certificate may never be valid for more than five years after the expiry of the basic patent.

Rights of the IP Owner

The owner of an IP right can claim several rights, such as: 

• the exclusive right to make, use, sell and import the invention for the duration of the patent term;
• the right to exclude others from making, using, selling or importing the invention without permission; and
• the right to grant licences to others, allowing them to use the invention under agreed terms.

Obligations of the IP Owner

The owner of an IP right also has obligations, such as paying renewal fees to maintain the patent in force. Some jurisdictions, including Italy, have sufficient exploitation requirements, meaning the patent owner is obliged to actively exploit the invention otherwise, in specific conditions of prolonged non-use for reasons attributable to the holder, third parties may claim a compulsory licence.

Public Information

Patent information, including details of granted patents, utility models and SPCs, is available to the public in the free to use UIBM database.

SPCs are designed to extend the duration of protection for these products beyond the expiry of the basic patent. As mentioned at 1.4 Term of Each Intellectual Property Right, the maximum term is typically five years, but it can be extended to a maximum of five additional years for medicinal products in certain circumstances. In accordance with Regulation (EC) No 1901/2006, the duration of the supplementary protection certificate for a medicinal product can be further extended by six months if the medicinal product has undergone a series of tests under the Paediatric Investigation Plan (PIP), which is a research and development programme that aims to provide clinical data aimed at verifying the drug’s usability in paediatric settings.

Third parties have the right to participate in patent grant proceedings in Italy by filing third-party observations: third-party observations can be submitted in the examination phase of the patent application, after the application has been published but before the patent is granted, allowing individuals or entities not directly involved in the patent application to provide information or raise concerns about the patentability of the invention.

Observations are submitted in writing to the UIBM: the observations may include arguments, prior art references, or other relevant information that the third party believes is pertinent to the patentability of the invention (ie, patentability criteria, such as novelty, inventive step and industrial applicability).

Where ‒ during the granting proceeding ‒ observations are received by the office from third parties:

• the examiner shall acquire the comments on file in order to make them available; and
• the examiner evaluates the comments but is not obliged to respond to the third parties and/or to inform or transmit to the holder of the application the comments received.

Pursuant to Article 135 of the Italian IP Code, in the case of disagreement with a negative decision by the UIBM, within 60 days of receipt of the rejection order, the applicant can decide to submit a formal request for appeal to the appropriate commission (the Board of Appeal of the UIBM).

The relevant fee must be paid annually, on the day corresponding to the filing date of the patent. For utility models, it is necessary,  at the same time as filing the application, to pay five annuities and after five years to pay the other five, so in total a maximum of two payments.

If the annuity is not paid, the patent lapses and has no further value.

In the case of a late payment, there is a period of six months within which it is still possible to pay the annuity by adding a surcharge, while after six months it is no longer possible to remedy the failure to pay, except in very rare and exceptional cases. If the annuities are not paid during the period when the patent is at the application stage, there is an additional period of four months from the grant within which it is possible to remedy the irregularities, after which it will no longer be possible.

In the case of changes in the rights conferred by the industrial property title (eg, transfers of ownership, changes in the owner’s personal status, additions or corrections to the original documentation), a special application, also known as a patent follow-up, must be submitted. Applications are submitted to the UIBM either online or on paper.

Italian law also expressly allows the patent to be amended even in the course of litigation: sometimes this can be necessary when the patent containing the original claims is at risk of being declared invalid because it has already been anticipated by similar patents while, conversely, by narrowing the scope of protection and thus limiting the claims, the patent may retain validity even if with a more limited scope.

Owners of technical intellectual property rights in Italy have various actions and legal remedies available to address infringement, as listed below.

Administrative Litigation

Very few intellectual property disputes may be resolved through administrative proceedings. The UIBM provides administrative procedures for opposition, revocation and nullity only for trade marks. 

Customs Protection

In order to try and prevent the entry of infringing goods into the Italian territory from a country outside the EU, it is possible to request the customs authorities to control the incoming goods (via Regulation (EU) No 608/2013) ‒ for a maximum period of one year, which may be renewable – and proceed to suspend the release or detain the goods that are actually infringing an IP right.

Civil Litigation

The Italian civil litigation practice is largely dominated by the use of preliminary measures, mainly starting with evidence preservation orders (Descrizione) issued “ex parte” and followed by preliminary injunctions.

Owners may seek preliminary measures before the intellectual property sections of the competent court to quickly intervene against infringing activities before or during the course of legal proceedings. In preliminary proceedings , which are generally much shorter in duration than in ordinary court cases, the law allows for temporary remedies such as preliminary injunctions, seizures and requests for any information (technical and accounting).

After the preliminary measure phase, cases that are not settled are transformed into ordinary proceeding to confirm the preliminary measures obtained and to claim damages.

Criminal Proceedings

In some cases, it is also possible to file a complaint against the counterfeiter (before the Public Prosecutor’s Office or area police stations) or report the counterfeiting to the Italian Revenue Police (Guardia Di Finanza) which, if there are crimes, will forward the facts to the Public Prosecutor’s Office.

In Italy, any third party who wishes to challenge or remove the effects of a technical intellectual property right can file the following.

Invalidity/Revocation Action

Any third party may file an invalidity or revocation action to challenge the validity, for example, of a granted patent. This can be based on various grounds, such as lack of novelty, lack of inventive step or insufficiency of disclosure. The request can be submitted by anyone who has a general interest against it, including the Public Prosecutor defending the public interest to not have unjustified monopolies.

Declaration of Non-infringement

Third parties can file preliminary or merit proceedings seeking a declaration of non-infringement. This legal action aims to obtain a court declaration that the third party’s activities do not infringe the asserted intellectual property right, but a valid interest in the action must be demonstrated to enforce it.

In Italy, however, there are no opposition proceedings for technical IP rights (patents and utility models), only for trade marks

In Italy, the jurisdiction for intellectual property matters lies with specialised sections of the ordinary civil court, called Business Courts: in Italian, the specialised sections are often referred to as Sezione Specializzata in materia d’Impresa.

Each court has specialised sections dedicated to handling intellectual property cases: they are established in the courts and courts of appeal located in the capital of each region, with the exception of Lombardy, Trentino-Alto Adige and Sicily (where there are two branches) and Valle D’Aosta (where there are no branches, as jurisdiction lies in Turin), for a total of 22 courts with jurisdiction in IP matters on Italian territory in the first instance. The choice of which court to refer to is determined on the basis of the place of residence, domicile abode of the defendant (forum rei), possible co-defendants or, alternatively, that in the place where the infringing activity took place (forum commissi delicti). 

Note that if one of the litigants is a foreigner, territorial jurisdiction is limited to 11 specialised courts. In fact, for disputes in which a company, in whatever form it is incorporated, with its registered office abroad, including those with branch offices with permanent representation in the territory of the state, is a party ‒ even in the case of several defendants ‒ only the Courts of Bari, Bolzano, Cagliari, Catania, Genova, Milan, Naples, Rome, Trento, Turin and Venice have jurisdiction.

Appeals from decisions of the specialised sections of the Business Courts of first instance are heard by the courts of appeal (Corte d’Appello). The courts of appeal also have specialised sections for intellectual property matters and sit in the in the capital of each region, with the exception indicated above.

The third and final instance for intellectual property matters is typically the Supreme Court of Cassation (Corte Suprema di Cassazione). The sections dealing with intellectual property matters are the Civil Sections (Sezioni Unite Civili).

Even though there is no specialised body for the resolution of intellectual property disputes by law, the UIBM and the World Intellectual Property Organization's Centre for Arbitration and Mediation (the “WIPO Centre”) collaborate in order to promote the use of ADR procedures to resolve IP and technology disputes in Italy. 

Since July 2020, the WIPO Centre has entered into a Memorandum of Understanding with the Milan Chamber of Arbitration (CAM), an institution of the Milan Chamber of Commerce, for the promotion of mediation in international disputes in the fields of IP and technology. As part of this collaboration, the WIPO Centre and CAM jointly handle mediation cases involving at least one non-Italian party, according to the WIPO mediation rules.

In Italy, there are no strict prerequisites to filing a lawsuit in intellectual property matters, including patent infringement cases. 

Any IP rights and patents can be enforced during the application period (ie, after the publication occurring after 18 months from the filing date).

The law only requires the grant before the final decision on the merits. Therefore, all the preliminary measures may be adopted without waiting for the final grant (which may take several years).

Secondly, there is no need to send a warning letter. Such initiative, moreover, may frustrate the surprising effect of the “ex parte” order and may legitimate a non-infringement declaratory action from the counterpart receiving the letter.

Mediation is not a condition for prosecution for patent matters, but, as of July 2023, it is for some matters that may be affected by the lawsuit (eg in the fields of supply or subcontracting contracts).

However, a judicial delegated mediation is compulsory: when the judge, after assessing the nature of the case in the ordinary proceeding, the state of the investigation and the behaviour of the parties, orders the mediation process to be carried out, the same process is a condition for the proceeding of the court application.

In Italy, parties involved in intellectual property litigation are always required to be represented by a lawyer.

In Italy, interim injunctions, including ex parte injunctions, are available and commonly used in intellectual property matters. 

The circumstances for granting the interim injunctions are as follows. 

Likelihood of Success on the Merits (fumus boni iuris)

The party seeking the interim injunction must typically demonstrate a prima facie case, indicating a likelihood of success on the merits of the intellectual property infringement claim. This involves showing that there is a valid intellectual property right, a likelihood of infringement and a basis for legal action.

Urgency (periculum in mora)

Interim injunctions are granted when there is an urgent need to prevent irreparable harm to the rights holder. The appreciation of the urgency is much more flexible than in other European jurisdictions (several months from the infringement knowledge).

In Italy, a potential opponent facing the risk of an interim injunction or other legal actions in intellectual property matters cannot file protective briefs or similar. 

The usual reaction, having received a direct or indirect warning, is to file a non-infringement declaration action, selecting the most appropriate IP Court, with the aim of preventing ex parte actions from the patent owner. 

Even if the Italian law provides that evidence protection measures and/or preliminary injunctions may subject to the applicant’s posting of a bond or security in order to guarantee compensation for any damage suffered by the defendant, such practice is not common.

Under Italian law, the right to compensation for damages arising from a tort (and thus also for patent infringement) is prescribed in five years from the day on which the tort occurred. This means that an IP right holder generally has a period of five years from the date on which they became aware (or should have become aware) of the infringement to initiate legal proceedings aiming to claim damages. In fact, if during the ordinary proceeding, the infringement period may be longer than five years, the entitlement of the patentee is limited to the last five years.

Italy is the leading jurisdiction in the practice of obtaining relevant information and evidence from the other parties or from third parties, both before and after lawsuits have begun.

The legal system provides several tools to facilitate the discovery of evidence before the lawsuit, by asking the court to grant an ex parte search order (Descrizione).

Such order, which has been regulated in Italy for more than 50 years, is similar to the French Saisie-description but much more powerful and effective. 

The search order is usually grated ex parte. Only in very exceptional cases does the judge require an inter partes hearing.

In addition, the Italian courts were the first to grant ex parte cross-border search orders within the EU via the Council Regulation (EC) No 1206/2001 (now updated as Regulation (EU) 2020/1783): as confirmed in the Advocate General’s opinion in CJEU Case C-175/06.

As far as this measure is concerned, Italian law authorises the search of not only technical, but also accounting documentation (commercial invoices and orders within the limits of confidentiality) in order to acquire evidence regarding the actual scope of the infringement, with the identification of suppliers, distributors, points of sale, etc.

Given that such measures, like other precautionary measures, have the function of ensuring immediate protection, they can also be requested in the absence of full and absolute evidence: what is important is to be in possession ‒ in addition to proof of the existence of the right of the holder of the infringed right ‒ of objective and reasonable evidence of the infringement of such right and the risk of suffering serious and irreparable damage. Following the same procedure, it is also possible to request the seizure of counterfeit goods, for example. 

Like the seizure, the search order provides for the necessary establishment of the judgment on the merits: it will be necessary, subsequently, to commence ordinary proceedings on the merits within the mandatory deadline of 31 calendar days in order to ascertain in greater detail the existence and extent of the infringement and to claim compensation for the damages suffered. If this deadline is not met, the evidence collected cannot be used in court.

After the formal proceeding have begun, if the party has provided serious indications that its claims are well-founded and has identified documents, elements or information held by the other party that confirm these indications, it may ask that the court order their production or request the information from the other party. It may also request that the court order the other party to provide elements for the identification of the persons involved in the production and distribution of the infringing goods or services.

The judicial authorities, in both interlocutory and substantive proceedings, may also order, upon a justified and proportionate request by the applicant, that information be provided on the origin and distribution networks of the goods or services infringing a right: this information is obtained by questioning the infringing parties or third parties.

In the pleading initiating the proceedings, the plaintiff must set out clearly, specifically and concisely the factual and legal grounds for the claim, indicate the evidence it intends to rely on and the documents it offers to produce.

The content of the writ of summons is provided by Italian procedure law: it must contain, for example, the indication of the competent judicial office, the parties, the subject matter and the grounds for the claim, the form of order sought, or the application made.

The initial pleading is not typically required to include extensive evidence. However, it should refer to key facts and evidence that will be presented during the course of the proceedings. Parties are generally allowed to supplement their pleadings with additional arguments or evidence during the course of the proceedings. This can be done in response to counterarguments raised by the opposing party or as a result of new developments in the case.

The rules underlying the lawsuits in intellectual property proceedings are the same as those of the general Code of Civil Procedure (CPC), but the Italian system is based on a complex exchange of written pleadings between the parties (as a rule, in interlocutory proceedings alone, there is an exchange of at least five pleadings): the parties have several opportunities ‒ both in interlocutory proceedings and in proceedings on the merits and on appeal ‒ to submit new arguments and documents.

In the Italian regulatory system, class actions have been envisaged since 2019, but not specifically for IP matters: at present, there are two general regulations that exist side by side (one contained in the CPC and one contained in a special directive that can only be activated by consumer associations, which entered into force in April 2023). 

At present, however, there is no precedent for class actions in IP matters.

The exercise of intellectual property rights is subject to compliance with antitrust and competition laws: for example, unfair competition practices, anti-competitive agreements and the abuse of a dominant position are prohibited. The exercise of intellectual property rights should not unduly restrict competition in violation of these laws.

Moreover, the sending of a warning letter not properly grounded or expressing extremely aggressive tones may generate the right to obtain an injunction against such behaviour and the determination of a specific financial and image liability against the patentee.

In certain circumstances, competition authorities or the court may grant compulsory licences to third parties if the exercise of an intellectual property right is deemed anti-competitive or results in a restriction of competition: more specifically, in the context of standard-essential patents (SEPs), the owner may have made FRAND (fair, reasonable and non-discriminatory) commitments, which oblige them to license the patent on fair, reasonable and non-discriminatory terms. Failure to abide by these commitments may raise antitrust concerns.

The necessary parties to an action for patent infringement are the IP owner(s) and the alleged infringer(s).

The licensee(s) may also start an infringement proceeding but only if there is express authorisation in writing by the patentee.

In any case, the licensee(s) may intervene in the litigation in order to claim their own loss of profits due to the infringement actions affecting their own markets. 

As a general rule, direct infringement usually requires that the patent has been violated in its entirety, and according to all the claims by the alleged infringer/defendant. Violations involve manufacturing, using, selling, marketing and importing/exporting activities intended to illicitly exploit the patented product. 

Indirect infringement (also referred to as “contributory infringement”) requires the involvement of – at least – two subjects that only partially implement the claims in their products/proceedings – therefore, taken alone, their conduct appears formally licit. Nonetheless, the joint conduct of the subjects involved make it possible to obtain the patented product/process in its entirety. This hypothesis requires that (i) the conduct of the subjects involved are all necessary for the infringement (eg, one subject manufactures and provides a tool/part/device to the other subject that is necessarily assembled with the final – infringing – product), and (ii) that the parties involved have an infringing intent (ie, they know or cannot ignore that the joint conduct generates a patent infringement).

In both cases of infringement (direct/indirect), the patent owner has the same remedies for protecting their rights, which usually consists of urgent proceedings/proceedings on the merits aimed at obtaining search requests, seizures, injunctions, damages, etc.

Regarding process patent infringements, there is a special rule related to the presumption of the infringement if the final product obtained is identical to the one of the patentee. Therefore, this situation provides scope for acquiring ex parte injunctions. In terms of jurisdictions, if the infringement is generated by the co-operation of multiple players (suppliers and resellers) as identified by an ex parte order, then the other players may also be involved in the same litigation with potential cross-border effects (providing there are parallel patents).

As a general rule, the scope of protection for an IP right is strictly connected to its registration. In particular, for patents, the claims (and to a certain – interpretative – extent, also the description and the drawings) are the main elements to be taken into account in the comparison and evaluation of an alleged infringement. Patent infringement could be literal, complete or partial as well as made “by equivalent”. There are different ways to evaluate the “equivalence” (the most common is the “triple test approach”; others are the “invention as a whole approach” and the “element by element approach”).

The Italian jurisprudence is open to consider the influence of other jurisdictions (namely that of the UK) but there is serious prudence in avoiding the “extreme interpretation” approach, like in the Aga/Occlutech decisions in Germany before the correcting intervention of the German Supreme Court. 

As a general rule, assuming the validity of a patent, the following are considered to be non-illicit conduct:

• implementing a patent for private and non-commercial uses or for experimental purposes;
• certain exceptions concerning pharmaceutical products (eg, Bolar clause or galenic exception); and
• prior use.

Compulsory or fair, reasonable and non-discriminatory (FRAND) licences have limited application (and usually with regard to standard essential patents).

The application of the “balance of interest” approach, naturally belonging to the legal education of the Italian judges (dating back to the “Roman process” of two millennia ago) allows the judge to decide whether to grant an injunction or to apply alternative measures (as described in the Article 12 of the EU Enforcement Directive). The famous Samsung v Apple case of 2011 before the Court of Milan follows that approach exactly.

In the case of issues concerning technical evaluations, in order to assess whether or not an infringement has taken place, experts are often appointed. In particular, the judge appoints the court expert in charge of providing a written report with the technical answers to the issues asked by the judge. During the court expert analysis, the parties are also allowed to appoint their own technical experts in order to highlight the different arguments of the parties and provide any relevant additional documents and data/information. Nonetheless, the judge is not obliged to agree with the conclusions made by the court expert and may reach a different conclusion.

In Italy, there is no separate procedure for construing the terms of the patent’s claims before the courts. The interpretation of the patent’s claims is the focus of the civil litigation with the support of the appointed court expert.

In Italian procedure, there is no system by which the court can seek or receive third-party opinions (amicus brief).

Nevertheless, the intervention of a third party interested in supporting one of the parties is permitted. 

The Court of Milan allowed this initiative in two recent cases, allowing the evidence of reasonable interest of the intervening party (in both cases, the intervener was an association aiming to protect IP rights, INDICAM, supporting the IP owner). 

The Italian procedure does not require any special remedy and/or reason for revocation/cancellation of an IP right.

Any third party (including a public prosecutor) is entitled to start a cancellation/revocation action against a patent.

According to Italian law and procedure, partial revocation/cancellation is possible. A frequent hypothesis worth mentioning is the case of patent limitation requested by the owner during the litigation and/or the “merging” of a (null) independent claim with one or more dependent claims.

The patent owner can potentially always limit the scope of protection of the patent at any point of the trial. Nonetheless, a fair behaviour would imply not doing so at the very end of the trial (ie, just before the decision is issued and the joint consultation/evidentiary phase already closed – in fact, re-opening those phases may result in an unfair time and cost expense for the other party and the court) and not exceeding the number of limitation requests.

According to Italian law and procedure, revocation or cancellation and infringement can be heard together in the same trial.

Of course, this largely depends on the situation.

A revocation action started by an alleged infringer before the patent domicile without a counterclaim for infringement will necessarily be discussed and decided simply on the validity point of view, while a later infringement action may be pending between the same parties before another court where the alleged infringer did not file a nullity counterclaim.

Due to the presence of 22 or 11 competent courts in Italy, the scenario described above may be justified by specific strategic decisions of the party’s lawyers. 

Intellectual property rights proceedings in Italy are governed by the CPC and, for certain specific issues, by the Italian IP Code .

A due distinction must be made between preliminary and main proceedings, relevant in terms of timing and effectiveness for patent protection.

Preliminary proceedings, which are commonly used for patent matters, allow the patent owner to obtain a swift decision from the court within six to nine months on average, including the appeal stage. These proceedings are very flexible (being not bound to a procedural timeline) and usually, after the filing of the motion and the defensive brief, include a first hearing aimed at verifying the urgency, a technical stage on the validity and the infringement of the patent, and a final discussion focused both on the technical and legal aspects. The related order assessing patent infringement includes remedies such as preliminary injunction and/or seizure of the infringing goods, astreinte, market recalls. 

As to the main proceedings, the standard timeline, involving revocation and infringement issues, is typically two to three years. The recent reform (2023) of the CPC introduced a series of simplifications in terms of timing and hearings to be held, which in patents matters usually involves four trial hearings:

• a first hearing;
• the appointment of the court-appointed technical expert (CTU);
• the discussion of the results of the CTU’s findings; and
• a final hearing. 

Fact witnesses are not very common in patent matters because they are limited to confirming the factual circumstances unrelated to validity and infringement. Expert witnesses are not specifically provided for, but parties’ experts take part actively during the CTU stage. Only the judge can examine the witnesses and the CTU, eventually upon specific requests from the parties’ counsel.

The merit judgment assessing the infringement usually includes remedies such as permanent injunctions, market recalls, astreinte, assignment, or, alternatively, the destruction of the infringing goods. For the assessment of damage awards or return of profits, the courts usually open a further stage dedicated to the determination of damages by a CTU.

The cases are determined by legal judges without technical competence, who base their decisions on the findings regarding patent validity and/or infringement of the CTU.

The preliminary proceedings are conducted and decided by a single IP-specialised judge at the first instance, while the appeal stage is held by a panel of three other judges from the same IP court section.

The main proceedings are conducted by a single IP-specialised judge and decided by a panel of three IP-specialised judges, both at the first and appeal stages. 

The parties have no influence on the selection of the judge, who is appointed by the presiding judge of the specific court selected. Nevertheless, from a strategic point of view, the patent owner has the chance of choosing, according to the criteria of the forum rei, any possible co-defendant and the forum commissi delicti from among the alternative courts.

According to the CPC, the first hearing of a main proceeding is aimed at finding a possible settlement of the case, requiring the presence of the parties. 

During the proceedings, hearings for attempting court mediation can be scheduled at any stage upon the joint request of the parties or on the initiative of the judge.

According to the latest interpretation of the Italian Supreme Court, a main infringement proceeding can be temporarily stayed when the defendant has initiated a parallel revocation action in a different court. This situation may occur due to the different criteria for court jurisdictions. In fact, while the patent owner may initiate the proceedings before the forum rei or the forum commissi delicti, the defendant can challenge the validity of the patent not only as a counterclaim in the infringement proceedings but also starting a revocation action before the court where the patentee has elected their domicile and generating the scenario described above at 4.4 Revocation/Cancellation and Infringement.

Anti-suit injunctions have not been observed in Italy and, in any case, they are deemed contrary to the EU legislation and principles on jurisdiction.

In preliminary proceedings, the patentee is granted the right to obtain injunctive relief, seizure of infringing goods and market withdrawals of the same. 

Injunctive relief and market withdrawals are usually assisted by an astreinte or penalty for each violation of the order.

Legal remedies for the patentee in main proceedings include permanent injunctive relief, market recall, destruction, or assignment of the infringing goods (and essential means for the production of the same), all enforced through an astreinte or penalty in the case of breach of the related orders in the judgement. 

The remedy of damages (compensation) is based on loss of profits of the patentee, which are usually calculated starting from the royalties that the infringer would have pay to the patentee for the licence (duplicated, as deterrence) up to the patentee’s actual loss of profits due to the presence of the infringing products in the market. In any case, the patentee can ask for the return of the infringer’s profits, which is awarded either in conjunction with or as an alternative to loss of profits, but only for the portion exceeding the damages awarded. 

Judges have discretionary powers to ensure proportionality between remedies, the intensity of the infringement and the interest of third parties.

Winning parties, including defendants, have the right to recover legal costs and attorneys’ fees, as determined by the judge based on rates outlined in specific legislation. 

Although rare, if the patentee is found to have acted with gross negligence or in bad faith before the court (ie, being aware of the invalidity of the patent and/or the non-existence of the infringement), the prevailing defendants are entitled to seek compensation for damages.

The Italian system does not provide for different types of remedies according to different technical intellectual property rights. 

An appeal does not automatically result in a stay of the injunction, which must be specifically requested by the infringer. In preliminary proceedings, the appeal judges can be granted a stay when for supervening reasons the injunction is likely to cause serious harm. In main proceedings, a stay may be granted if the appeal appears to be manifestly well founded or if the execution of the injunction is likely to cause serious and irreparable harm.

Decisions can be appealed according to the general rules set forth in the CPC, without special provisions concerning intellectual property rights proceedings.

Decisions issued in urgent proceedings (eg, preliminary injunctions) can be appealed within 15 days. In these proceedings (reclamo), it is possible to add facts and documents/evidence. The judge schedules at least one hearing for the discussion and may concede terms to the parties for filing other written defences (replies and clarifications). Normally, the new decision is issued a few weeks later and cannot be appealed further.

Decisions issued in ordinary proceedings (ie, proceedings on the merit) can be appealed within 30 days (if the other party is notified of the decision) or six months (if the other party is not notified of the decision). In these proceedings (appello), as a general rule, it is not possible to add new facts, arguments and documents/evidence, and the claims shall specifically address the issues – factual and judicial – misvalued and/or misinterpreted by the first judge. The judge usually schedules only two hearings for discussion and parties then have two rounds of written defences to present the case, reply and make their conclusion and final requests. These proceedings can last up to two to three years. The decision issued can be contested before the Supreme Court (but only for issues concerning the implementation and/or interpretation of the law).

Usually, when aware of an infringement (suffered or committed), a party can react in different ways before filing a lawsuit. In particular, investigations or expert analysis can be made (eg, purchases of allegedly counterfeited items; requests for forensic and technical opinions; draft of warning letters). In all of these cases, the party shall bear the costs (which can be submitted for a full or partial refund – as “cost of reaction”) in the future lawsuit.

Court fees for commencing intellectual property rights proceedings are paid at the time of filing the case. The fees are fixed but divided into different brackets depending on the declared monetary value of the case (eg, the value of a licence agreement and relative royalties): the higher the monetary value involved, the higher the fee. Nonetheless, in most of the cases, before commencing the lawsuit it is impossible to provide an evaluation of the monetary value of the litigation (usually depending on the damage ascertained during the proceedings): in these cases, the fee is fixed and varies from around EUR500 to around EUR1,000, depending on the type of proceeding (ie, urgent proceedings or proceedings on the merit). The number of parties and/or of patents involved is irrelevant (these elements can possibly increase the complexity of the case and therefore the costs of the legal defence in the litigation).

Before and during the litigation, each party bears its own costs. The judge decides if the litigation costs (especially ones related to the legal defence, the court expert intervention, etc) shall be divided or entirely borne by the losing party. Certain costs, such as the “cost of reaction”, can be refunded as part of the damage suffered due to the adversary infringement.

Alternative dispute resolution (ADR) options are available and include mediation, arbitration, expedited arbitration and expert determination. ADR is not a common way of settling an intellectual property case (even if it is not uncommon for the parties to settle the case – usually under the advice of their respective lawyers ‒ after having commenced a lawsuit).

Assigning an intellectual property right is possible by the legitimate right-owner (in the case of patents, the inventor always maintains its authorship on the invention). In order to be opposable to third parties, the assignment shall be in writing and properly recorded before the UIBM (trascrizione).

Usually, the assignment of an intellectual property right is provided in a single agreement or is part of a bigger inter-company strategy (eg, M&As, IP driven acquisitions). The intellectual property right at issue shall be precisely identified, as well as the owners and authors and the price. In (rare) cases, should the patent not be filed or registered, it is advisable to include undertakings for keeping the invention secret. The assignment must be notified to the relevant patent office in order to be recorded in the public patent register (trascrizione).

The licensing of an intellectual property right is possible by the legitimate right-owner. It is always advisable to proceed in writing, but case law also admits the existence of an “implied licence” that can be proven by witness statements.

The written licence does not require any registration for its validity and should not be approved by any authority. 

In general, licensing in Italy is significantly subject to the compliance with the binding rules of Regulation (EU) No 316/2014. The intellectual property right at issue shall be precisely identified, as well as the owners and authors and the royalties to be paid by the licensee. The licence can be exclusive or non-exclusive. The licensor can also restrict the licence to certain countries an/or to certain products only. The licence agreement shall also define the duration of the licence and define certain limits of the licensee (eg, whether they can or cannot sub-licence the patent) or how to deal with patent improvements referable to the licensee. The licence agreement can be notified by any party to the relevant patent office in order to be recorded in the public patent register (trascrizione).