Address and Opening Hours

The Milan Local Division (the “Milan LD”) is located in Via San Barnaba 50, in a newly refurbished building in the city centre, right behind the historical court building hosting the District Court of Milan. The Clerk’s offices of the Local Division are open Monday to Friday from 10am to 1pm local time, excluding Italian public holidays.

Contacts

The Milan LD can be contacted via email at contact_milan.loc@unifiedpatentcourt.org and by phone at +39 02 5433 8011.

Presiding Judge: Mr Luigi Perrotti

Judge Pierluigi Perrotti has served as judge at the Court of First Instance of Milan since 2002, initially focusing on insolvency and corporate crisis. In 2010, he transitioned to the IP Chamber, specialising in intellectual property and antitrust and competition law. Over the years, he developed extensive experience in patent litigation across various technological sectors, having handled several dozen complex cases involving European and national patents. From 2012 to 2016, he was a member of the Judicial Council of Milan, gaining expertise in judicial organisation.

Legally Qualified Judge: Ms Alima Zana

Judge Alima Zana has served as judge at the Court of First Instance of Milan since 1999, and has been assigned to the IP Chamber for many years before becoming a UPC legally qualified judge. She specialises in IP and competition law and has acted as judge rapporteur in numerous cases related to both European and national patents in a number of industrial sectors.

Overall, Mr Perrotti and Ms Zana have worked together at the Milan IP Chamber for around ten years, handling numerous patent cases each year and often sitting on the same panel in many such cases. They have been involved in complex multi-jurisdictional disputes across all fields of technology.

Orders to Preserve Evidence

Despite a relatively smaller number of cases having been filed at the Milan LD (compared, for example, to German local divisions), this division has already established itself as one of the leading forums as regards orders to preserve evidence. It has granted six of them already, more than any other LD. The familiarity of the local judges with search orders often granted in Italian IP litigation is certainly something that applicants take into account when requesting orders to preserve evidence.

In the context of such orders, the Milan LD seems to be developing the practice of summoning applicants to a hearing under Rule 194(c) of the Rules of Procedure (RoP, to request additional information if necessary and to discuss practical details of how to enforce the order and ensure it does not extend beyond the boundaries of what is strictly relevant to gather evidence of the alleged infringement.

Confidentiality Within the Proceedings

The Milan LD has issued a number of confidentiality orders. The general rule is that – absent agreement between the parties or matters raising competition law issues falling within the scope of application of the Communication of the Commission on the protection of confidential information in court proceedings concerning the private enforcement of EU Competition Law (2020/C 242/01) – at least one in-house representative of the party should be provided access to the confidential information, in addition to all parties’ UPC representatives. In setting out the exact boundaries of the confidentiality club, the court has clarified that a balance shall be found between the legitimate interest of confidentiality of the disclosing party and the interest to an effective remedy and a fair trial (see, eg, ORD_68844/2024). The competition law implications shall be assessed rigorously and the party shall not limit itself to statement of principles (ORD_20073/2025). Reflecting the typical practice of the Milan IP Chamber, the court has also shown a proactive approach in favouring agreed solutions between the parties, stepping in to resolve the remaining contentious issues.

Confidentiality Towards Third Parties

The Milan LD has so far also demonstrated a strict approach to confidentiality of the documents on file. This is in line with Italian (and more generally continental) procedural law tradition, where decisions are publicly available but case files are not, and can be accessed only in exceptional circumstances. In this framework, the court has observed in particular that access shall not be granted when information sought by the applicant could be obtained otherwise, when the applicant has not shown that access to the requested documents is necessary to protect its stated interest, and when access to the case file of proceedings still pending could influence the defensive strategy of the parties involved (see, eg, order ORD_4166/2025 dated 20 February 2025 in the application for access by Bhagat in the Oerlikon v Himson proceedings).

On the other hand, on one occasion the Milan LD has granted access to documents of the case (in particular, to a request to preserve evidence) to a third party where the concerned party had provided its consent to such access (without prejudice to the redaction of personal data – see order of 4 December 2023 in the Progress Maschinen v AWM et al case).

Partial Stays and Partial Withdrawals

Other interesting procedural decisions taken by the Milan LD include the following.

• Confirmation that proceedings can be stayed in relation to only one of the patents involved (ORD_26013/2025). Proceedings may continue in respect of the other patents, in relation to which the parties have an interest in concluding the written procedure within the time limits set. Importantly, the same decision confirmed that where all parties request the stay of proceedings pursuant to Rule 295(d) RoP, the court has no discretion, but must order the stay, despite the use of the word “may” in the rule. This interpretation is based on the general principles that the parties are free to determine the subject matter of their case (Article 43 UPCA), and that the court must decide in accordance with the requests submitted by the parties (Article 76(1) UPCA).
• Confirmation that it is possible to withdraw a claim in relation to only one of the defendants involved in an infringement action, with the consequence that proceedings will continue only in relation to the other defendants, and that such withdrawal shall not come with a cost award when the withdrawal is justified by objective reasons such as the insolvency of the defendant in question (ORD_12831/2025).

This does not apply.

This does not apply.

This does not apply.

As of the time of publication (30 June 2025), the Milan LD has received:

• fifteen infringement actions, eight of which were followed by a counterclaim for revocation;
• six applications to preserve evidence (one of which also included an application for inspection);
• five applications for provisional measures (two of which were converted into seizure orders after an ex parte hearing with the applicant); and
• one application for a cost decision.

In total, there have been 27 cases at the Milan LD so far.

Publicly available up-to-date information on hearings can be found on the UPC official website calendar. At the time of publication of this guide (30 June 2025), the following have been heard.

Public Oral Hearings

There have been three public oral hearings held before the Milan LD:

• one held on 27 September 2024 in the context of infringement proceedings brought by Oerlikon Textile against Bhagat Textile Engineers;
• one held on 15 October 2024 in the context of an application for provisional measures (under Rule 206 RoP) brought by Insulet Corporation against Menarini Diagnostics; and
• one held on 11 June 2025 in the context of infringement proceedings brought by Oerlikon Textile against Himson Engineering.

Interim Conferences

Based on publicly available information, three interim conferences were also held:

• one held on 27 May 2024 in the Oerlikon v Bhagat case referred to above;
• one held on 6 December 2024 in the parallel case brought by Oerlikon against Himson Engineering; and
• one held on 5 June 2025 in the Progress Maschinen v AWM et al case.

By looking at cases filed before the Milan LD by reference to the classification of patents in suit under the International Patent Classification (IPC), established by the Strasbourg Agreement of 1971, it is apparent that most cases filed before the Milan LD relate to patents classified in IPC class  B (performing operations, transporting: 17/27 total actions, or 11/19 if proceedings to preserve evidence and subsequent infringement proceedings are counted only once). The second highest number of patents enforced are in IPC class A (human necessities: 7/27, or 6/19 without duplications). Finally, a minor number of cases concern other IPC classes.

So far, the only trend that seems to be emerging is a prevalence of cases filed to enforce patents in IPC classes A and B. Only three of the last fifteen actions filed concern patents classified in other IPC classes – one in IPC classes B and F (mechanical engineering, lighting, heating, weapons, blasting), one in IPC classes B and E (fixed constructions), and one in IPC classes A and C (chemistry, metallurgy).

The Milan LD seems to be generally on track with the general target set by the UPC of 12–14 months from filing to issuing a first instance decision on the merits, with a slight delay in some cases due to difficulties with service of the statements of claim which can end up taking significant time, particularly in cases requiring service under The Hague Convention.

One case that involved an interaction between the Milan LD and the Milan Central Division is the Insulet v Menarini case, where Insulet applied for provisional measures against Menarini (the distributor of the allegedly infringing product). Insulet also commenced proceedings before the Milan Central Division requesting preliminary measures against the manufacturer of the allegedly infringing product, EOFlow. The latter then applied to intervene in the urgent proceedings before the Milan LD in support of its distributor, but the court dismissed such application (ORD_51903/2024), noting that albeit an application to intervene is in principle compatible with urgent proceedings, under the specific circumstances the proceedings would have been excessively slowed down. Adopting a similar position, the Milan Central Division also dismissed an application to intervene by Menarini in those proceedings, in support of the position of EOFlow, citing as well the risk that urgent proceedings would be excessively slowed down under the circumstances.

Interestingly, in the two parallel cases for provisional measures before the Milan LD and the Milan CD, one of the legally qualified judges and the technically qualified judge were the same (respectively Ms Anna-Lena Klein and Uwe Schwengelbeck), so as to ensure some co-ordination in the outcome of the two cases.

So far, the Milan LD has issued a limited number of substantive decisions, namely the following.

Decision of 4 November 2024 (Oerlikon v Bhagat: infringement action)

The case was decided in favour of the plaintiff Oerlikon, finding the patent both valid and infringed. Since the focus of the case was on liability resulting from showing an infringing machine in the course of a trade fair, the decision only addresses issues such as liability in principle for damages (under Rule 118.5 RoP, the court considered that Oerlikon had proven to have suffered damages) and a provisional award thereof (awarded in the amount of EUR15,000 against a request of EUR100,000 by Oerlikon). It also addressed the request of disclosure of information to determine the amount of damages (which was denied, noting that it would be more efficient to address the issue in the subsequent proceedings for damages), publication of the decision (again denied due to the very limited scope of the infringing activities), and the allocation of costs in principle (to be borne by the defendant, but compensated by 20% between the parties in light of the circumstances of the case and the procedural conduct of the parties).

With a subsequent order (ORD_n. 22179/2025) the amount of costs was determined, based on the value of the case determined by the court. Even though the Milan LD held that the ceiling for recoverable costs associated with the value of the case should not be automatically reached in all cases and should be reserved for cases where the complexity of the issues, the number of patents or the number of parties involved justifies reaching such ceiling, the court awarded costs amounting to about 65% of the ceiling (see also 5.3 Costs Awards).

Order of 5 November 2024 (Cardo Systems v Shenzhen Asmax: application for provisional measures)

The Milan LD (in the person of the single judge Mr Granata, competent under Rule 208.2 RoP) issued an ex parte order (ORD_59913/2024) enjoining the defendant from marketing, distributing and selling a Bluetooth communication device for motorcycle helmets which was considered to be infringing the applicant’s patent rights. The order was issued ex parte (against the payment of a security in the amount of EUR100,000 within a period of ten days from service of the decision of the court, with the clarification that enforcement could start even before payment of the security) in view of the upcoming exhibition of the infringing product at the International Motorcycle Exhibition (EICMA) to be held in Milan, which is one of the most relevant trade fairs in the world for the motorcycle industry.

Order of 22 November 2024 (Insulet v Menarini: application for provisional measures)

The application was decided in favour of the defendant, rejecting the application for provisional measures for lack of certainty on the validity of the patent (held to be more likely than not invalid for lack of novelty). An interesting element of the decision (ORD_56587/2024) is that the Milan LD reasoned that auxiliary requests to amend the patent pursuant to Rule 30.2 RoP are inadmissible in proceedings for provisional measures. This is consistent with the principle of expediency of proceedings. According to the Milan LP, auxiliary requests to amend the patent are expressly admitted only in the defence to a counterclaim for revocation (Rule 30.2 RoP) or in the defence to revocation (Rule 50.2 RoP), and may therefore be lodged only in the main proceedings, before the court having jurisdiction to issue a final decision on the validity of the patent.

Subsequent appeal proceedings brought by Insulet were settled before reaching a decision. Notably, the same patent enforced herein was later held to be preliminarily (ie, more likely than not) valid by the Court of Appeal in Luxembourg in parallel proceedings brought by the same plaintiff against another manufacturer of insulin pumps.

The Milan Local Division has developed significant expertise in the granting of orders to preserve evidence, contributing to the formation of a significant body of precedents and to the progressive consolidation of case law on various substantive and procedural aspects of such measures. In particular, in Progress Maschinen v AWM, with clarification from the Court of Appeal, it was established that the time limit to initiate infringement proceedings on the merits, following the execution of a preservation measure, begins to run from the moment the applicant gains access to the expert’s report and the material collected during the execution of the order (see 4.6 Court of Appeal Procedural Jurisprudence for additional details).

Further proceedings for the preservation of evidence handled by the Milan LD have established a consistent practice whereby the applicant is summoned to an ex parte hearing prior to the grant of the measure under Rule 197.4 RoP, to discuss possible limitations and implementation details of the order sought. These include, inter alia, identifying the representatives and party-appointed experts who are allowed to attend the enforcement of the order, the specific locations to be accessed, and the precise identification of the documents to be searched and collected.

The following cases on the merits are pending before the Milan LD at the time of writing (June 2025) (the list does not include proceedings for provisional measures and proceedings to preserve evidence).

Oerlikon Textile GmbH & Co KG v Himson Engineering Private Limited

Infringement action, filed 12 July 2023, oral hearing held on 11 June 2025

The case started after an ex parte order to preserve evidence that was granted by the court to seize textile machines marketed by Himson on display at a trade fair in Milan. Following enforcement of the order, Oerlikon commenced the pending merit infringement proceedings. Himson challenged the validity of the patent by way of counterclaim on grounds of added matter, lack of novelty and lack of inventive step.

Progress Maschinen & Automation AG v AWM Srl & Schnell SpA

Infringement action, filed 15 April 2024, interim conference held on 5 June 2025, oral hearing scheduled for 16 September 2025

The patent in suit concerns a method and machine for producing lattice girders. The case started with an ex parte order to preserve evidence and inspection issued against AWM and Schnell. Following enforcement of the order, procedural issues were subsequently discussed regarding the time limit to bring the following merit proceedings: the Milan LD initially revoked the ex parte order, deeming that the deadline to do so had expired; the Court of Appeal later reversed this decision, stating that the deadline to bring merits proceedings runs from access to the material obtained and not from enforcement.

Following the Court of Appeal decision, infringement merit proceedings have been brought and are currently pending, with a counterclaim for revocation.

Telefonaktiebolaget LM Ericsson v Asustek Computer Inc et al

Infringement action, filed 14 June 2024

The action concerns the alleged infringement of two patents covering video coding technology. A counterclaim was filed by the defendants. The details of the case are not publicly available, other than in relation to the confidentiality order adopted by the court to preserve the confidentiality of the licensing agreements submitted by the parties. However, it is known that on 13 March 2025 Ericsson filed a request to withdraw the action in respect of one of the defendants – Digital River – which is now no longer a party to the proceedings.

Dainese SpA v Alpinestars SpA et al

Infringement action, filed 7 August 2024

The action concerns the alleged infringement of two Dainese patents across the UPC territory and Spain. No public information is available on the arguments put forward by the parties, although it is known that validity of the patents has been challenged by means of a counterclaim for revocation.

Notably, in the context of this case, the Milan LD issued an order rejecting the preliminary objection raised by the defendants which challenged the jurisdiction of the UPC to rule over infringement of the Spanish portion of one of the two European patents enforced (see 4.2 Key Procedural Issues for further details).

Agathon AG v Intercom Srl & Knarr Vertriebs GmbH

Infringement action, filed 3 December 2024

The action concerns the alleged infringement of Agathon’s patent covering a centring device for a mould tool. Due to issues related to the language of the documents filed by the plaintiff, the judge has ordered Agathon to file translations thereof and accordingly granted the defendants an extension to file their statement of defence. No further detail concerning these proceedings is publicly available.

Pirelli Tyre SpA v Sichuan Yuanxing Rubber Co Ltd et al

Infringement action, filed 5 December 2024

The action follows enforcement of a seizure order which was granted ex parte by the Milan LD to seize the defendants’ products on display at a trade fair taking place in Milan. The applicant had originally requested the grant of provisional measures – specifically a preliminary injunction and others – but converted its request to a seizure order only after a preliminary hearing scheduled by the court with the applicant to discuss the existence of the grounds for granting the provisional measures requested.

The patent in suit concerns a technology to achieve a tyre that offers excellent performance in both dry and wet driving conditions. At the time of writing, the parties have reached a confidential settlement, such settlement has been approved by the Court under Rule 365 RoP, but the case has yet to be terminated.

Pirelli Tyre SpA v Tianjin Kingtyre Group Co Ltd et al

Infringement action, filed 5 December 2024

The action follows enforcement of a seizure order which was granted ex parte by the Milan LD to seize the defendants’ products on display at a trade fair taking place in Milan. The applicant had originally requested the grant of provisional measures – specifically a preliminary injunction and others – but converted its request to a seizure order only after a preliminary hearing scheduled by the court with the applicant to discuss the existence of the grounds for granting the provisional measures requested.

The patent in suit concerns a technology to achieve a tyre that offers excellent performance in both dry and wet driving conditions. At the time of writing, the defendants have received service but have yet to file their statement of defence. No further details on the action are currently available to the public.

Morello Forni v Gastroteam et al

Infringement action, filed 13 December 2024

The action concerns the alleged infringement of Morello Forni’s patent covering a pizza dough shaping machine. Morello Forni (an innovative Italian SME) commenced proceedings against the former distributor of its machine reproducing the claimed features, claiming that the same now markets an identical copy of the original machine. The Italian distributor of such machine was also involved in the action. At the time of writing (June 2025), the defendants have received service but have not filed their statement of defence within the relevant deadline under Rule 23 RoP. No further details on the action are currently available to the public.

Edwards Lifesciences Corporation v Sintec Srl & Value Med Srl

Infringement action, filed 6 March 2025

The action concerns the alleged infringement of Edwards’ patent covering a prosthetic valve and delivery catheter. It follows a decision of 19 July 2024 by the Paris CD holding the patent valid in amended form and a decision by the Munich LD (currently under appeal) holding two Meril products, allegedly distributed by both defendants in suit, to be infringing. At the time of writing, no public information is available on the substantive arguments brought by either side. On 5 May 2025, the court invited both parties to negotiate a settlement while the above-mentioned decisions are under appeal.

Hypertherm Inc v Tec.Mo. Srl

Infringement action, filed 14 March 2025

The case concerns alleged infringement of Hypertherm’s patent covering consumables for a plasma arc cutting torch. It is still in its very early stages – the statement of claims was served on 2 April 2025 – and no public information is yet available on the substantive matters at issue.

Primetals Technologies Austria GmbH v Danieli & C. SpA

Infringement action, filed 29 April 2025

The case concerns alleged infringement of Primetal’s patent covering a driver for a steel strip coiling installation and was filed after enforcement of a previous order to preserve evidence obtained from the same Milan LD. It is still in its very early stages – the statement of claims was served on 16 May 2025 – and no public information is yet available on the substantive matters at issue.

The legally qualified judges (LQJs) of the Milan LD are at ease in interacting with the technically qualified judges (TQJs), due to the established practice in national proceedings of involving court-appointed technical advisers in the case to obtain technical inputs on the validity and infringement of the patent in suit. Such practice is already reflecting how the Milan LD handles its cases, resulting in (i) frequent requests for the appointment of a technically qualified judge to the panel, as soon as technical arguments start being developed by the parties, and (ii) significant involvement of the appointed TQJs when deciding on technical issues.

Additionally, even if the number of decisions issued to date is very limited and none of them has yet addressed inventive step, the role that TQJs are likely to play in the decision-making process of the Milan LD would imply a stronger reliance on the problem-solution approach (PSA) as compared to other LDs. The Milan LD is hence expected to lean towards a more consistent EPO-style application of the PSA, influenced by the typical practice of Italian national courts, which consistently adopt the test in assessing inventive step.

As mentioned above, the traditional approach by Italian judges of interacting with an independent technical adviser is likely to influence the use of and interaction with technically qualified judges. To date, these have indeed been appointed in all cases where substantive issues were discussed, and it can be expected that – even if not mandated or requested by the parties – a technically qualified judge will be appointed in most cases going forward. Another area of influence of prior national practice is in connection with the approach of the Milan LD to orders to preserve evidence, typically granted any time evidence of the infringement is not publicly available for the patentee.

This does not apply.

Hearings (and interim conferences) held so far before the Milan LD have been well structured and in line with the emerging practice of other local divisions. In preparation for the interim conference/hearing, the judge rapporteur typically issues a case management order requesting the parties to submit a short brief summarising their arguments and requests a few days prior to the interim conference/hearing (see, eg, ORD_27218/2024 and ORD_598364/2023). The judge rapporteur provides a short introduction at the outset of the interim conference/hearing mentioning the main topics to be addressed, without providing the views of the panel on such issues. This is in line with the traditional approach of Italian judges in national practice.

Whenever during an interim conference/hearing it is necessary to discuss information or documents to be treated as confidential, the interim conference/hearing is briefly interrupted (and the audio recording thereof is paused as well) to allow any member of the public or other persons not part of the confidentiality club temporarily to exit the courtroom.

Jurisdiction Over Infringements Outside the Territory of the UPC

With the order of 8 April 2025 issued in the context of pending merit proceedings for infringement of two patents held by Dainese (ORD_64124/2024), one of which is also in force in Spain, the Milan LD rejected the preliminary objection filed by Alpinestars and confirmed that, when the patentee seizes the LD of the domicile of the defendant, then that LD has jurisdiction to rule over alleged infringements taking place outside UPC territory.

This decision confirmed the long-arm jurisdiction of the UPC in light of both the recent CJEU decision in BSH v Electrolux (Case C-339/22) and the existing precedents of the same UPC (Fujifilm v Kodak by Düsseldorf LD; Mul-T-Lock v IMC by Paris CD).

Preliminary Hearings Under Rule 197.4 in Preservation of Evidence Cases

In at least the most recent cases of requests for preservation of evidence, the Milan LD has been summoning the applicant to a preliminary hearing set under Rule 197.4 RoP. This is mainly to request clarifications as to some aspects of the application and to discuss details of the execution of the measure (for example, the specific names of the representatives and technical experts attending, locations where the evidence sought might be held, and keywords that might be used to search for specific information in digital format if needed). This allows the order to reflect such details and so better define the exact scope of the preservation of evidence measures, in view of balancing the right of the applicant to collect and preserve relevant evidence, and the right of the target entity to protect its activity from hindrance as well as its confidential information.

Request for Information Under Article 67 UPCA

On at least one occasion, in the above-mentioned final decision issued on 4 November 2024 in the Oerlikon v Bhagat case, the Milan LD has dismissed a request by the plaintiff to obtain disclosure from the defendant of accounting and financial information aimed at determining the extent of the infringing activities and therefore the amount of reimbursable damages. The Milan LD reasoned that such request shall not be granted in infringement proceedings and is rather more appropriate in the subsequent proceedings to award damages, where it could be dealt with more efficiently.

So far, the Milan LD has adopted a rather strict approach to third-party requests to access documents of pending cases, opting to dismiss requests of third-party access on a number of occasions. The court has observed in particular that access shall not be granted when information sought by the applicant could be obtained otherwise, when the applicant has not shown that access to the requested documents is necessary to protect its stated interest, and when access to the case file of proceedings still currently pending could influence the defensive strategy of the parties involved (see order ORD_4166/2025 dated 20 February 2025 in the application for access by Bhagat in the Oerlikon v Himson proceedings). On the other hand, the Milan LD has granted access to documents of the case (in particular, to a request to preserve evidence) to a third party where the concerned party had provided its consent to such access (without prejudice to the redaction of personal data) (see order of 4 December 2023 in the Progress Maschinen v AWM et al case).

No publicly known procedural issues worth noting are pending at the time of writing.

As anticipated, the Milan LD has granted the highest number of orders to preserve evidence and inspection among all UPC divisions, and demonstrated significant capacity to handle all related issues (including confidentiality of the documents acquired, time line and deadlines to bring subsequent merits proceedings, need for security, etc). This is certainly the result of the judges of the local division being familiar with search orders that are routinely issued in Italian national practice, which influences their approach in the procedural nuances involved in granting such orders.

A specific point where prior local practice has influenced the approach of the Italian judges of the Milan LD, still in relation to requests for orders to preserve evidence, is the need for security imposed on the applicant as a condition for enforcement of the order. In the earliest orders issued by the Milan LD, the need for security had been excluded, inter alia, because (under the traditional view of Italian IP courts) such evidentiary measures typically do not risk creating damages to the entity subject to the measure. Such approach has since been overcome in the framework of the ongoing effort by the UPC to harmonise the case law among divisions, and security is now routinely imposed by the Milan LD with orders to preserve evidence, for an amount based on the value and the specific circumstances of the case.

In a similar fashion, in its interpretation of the deadlines provided under Rules 197 and 198 RoP concerning the timeframe to bring merit proceedings following enforcement of an order to preserve evidence, the Milan LD was initially influenced by Italian procedural law, which provides that the strict deadline to do so runs from confirmation of the search order, but later changed its approach after the Court of Appeal intervened to harmonise the case law on this specific procedural point (see 4.6 Court of Appeal Procedural Jurisprudence for more details).

So far, the most relevant procedural point addressed by the Court of Appeal in reforming case law of the Milan LD concerned the determination of the deadline for bringing subsequent merit proceedings following enforcement of an order to preserve evidence.

Specifically, in Progress Maschinen v AWM et al (ORD_9710/2024), the Milan LD held that the deadline for the applicant to bring merit proceedings (and to this end request access to the acquired material) had expired because the deadline provided under Rule 198 RoP (31 calendar days or 20 working days, whichever is longer) had effectively started running after expiry of the prior 30-day term for the defendant to lodge a request for review of the order to preserve evidence (Rule 197.3 RoP).

On appeal (ORD_36778/2024), the Court of Appeal clarified that, absent a request to review the order from the defendant, such term only starts running once the applicant/plaintiff has had access to the material acquired or from the date on which the court has made a final decision not to grant the applicant access to the evidence (in the case at issue, it had not started running, since Progress Maschinen had not yet been granted such access).

So far, no specific trend has emerged in this regard before the Milan LD. As far as is publicly known, the value of the case proposed by the applicant was challenged in the Oerlikon v Bhagat merit proceedings. The court ultimately confirmed the EUR750,000 value proposed by Oerlikon, dismissing Bhagat’s attempt to reduce the value of the case (and therefore the applicable ceiling for recoverable costs).

As regards court fees paid by applicants, in Morello Forni v Gastroteam the plaintiff requested and obtained a reduction of fees to be paid to 60% of the standard fees under Rule 370.8 RoP, arguing that it falls within the category of Small and Medium-Sized Enterprise (SME).

Court fees at the UPC are generally much higher than national fees, where fees for a patent action are typically limited to around EUR1,000. This is arguably one of the reasons why pure national Italian patent litigation has not yet shifted to the UPC (as opposed to other jurisdictions, where UPC costs are comparable to costs for national patent litigation).

At the time of publication of this guide, there has been one award of costs for EUR77,064.65 following an application for a cost decision by Oerlikon Textile GmbH v Bhagat Textile Engineers (ORD_n. 22179/2025). The amount awarded is lower than the figure requested by the applicant. Oerlikon indeed aimed for an award meeting the higher end of the ceiling for recoverable costs set in relation to the case value established by the court, but the Milan LD reasoned that such higher end award of costs should not be the default cost award and should instead be justified by the complexity of the issues involved, the number of patents examined, the parties involved or the use of multiple languages, which was not the case here given the circumstances at hand.

No awards of damages have yet been issued. A provisional award of damages for EUR 15,000 has been issued in the above-mentioned final decision of the Oerlikon v Bhaghat case.

Seizing the Milan LD may offer several key advantages to patentees. First, the current docket remains relatively clear, with a low number of pending cases, ensuring greater efficiency and shorter time lines, whereas the procedural framework and available remedies are uniform across all UPC divisions, guaranteeing legal certainty. Moreover, the judges appointed are highly experienced in patent litigation, benefiting from both their judicial expertise in Italian IP courts and their frequent designation in other UPC local divisions, in the framework of the attempt by the UPC to reinforce consistency and quality of decisions. As mentioned, they are also accustomed to interacting with TQJs in light of their previous national practice, resulting in significant involvement of TQJs in the decision-making process of the Milan LD.

Last but not least, as mentioned, the Milan LD has issued more orders for preservation of evidence as compared to all other LDs, contributing significantly to building the case law of the UPC in this respect. Hence, in cases where evidence can only be obtained by having access to the premises of the defendant or where obtaining an order for preservation of evidence is strategically or tactically advisable (eg, to prove infringement of dependent claims which may better resist invalidity challenges), patentees should consider seizing the Milan LD if possible. They will benefit from the LQJs’ significant experience in handling this kind of measure, and also from the experience of the supporting staff of the sub-Registry in handling the formalities and practicalities of the execution phase, and of experts appointed by the court under Rule 196.4 RoP who are typically selected from skilled patent attorneys with experience in carrying out similar measures under Italian national law.

Over the next two years, a notable trend in patent litigation before the UPC is expected to be the gradual reduction of the current concentration of cases in German local divisions, with a more balanced distribution of litigation across different UPC divisions. Such redistribution is anticipated to be facilitated by the emerging harmonisation of case law by the Court of Appeal, which will promote greater consistency and legal certainty across the participating jurisdictions, encouraging broader venue selection by litigants.

National patent litigation in Italy is likely to retain a significant role, primarily due to its substantially lower costs compared to proceedings before the Unified Patent Court. It will remain particularly relevant for disputes of local importance. Moreover, in certain sectors – such as pharmaceuticals involving secondary inventions – national litigation may continue to be preferable for patentees, allowing them to avoid central revocation risks and better manage litigation exposure tied to high-revenue products. Italian assertions may also continue to play a role in situations where the patentee wishes to anticipate enforcement, without waiting for grant of the patent by the EPO. This is because Italy is one of the few jurisdictions that allows courts to issue exclusionary remedies on the basis of patent applications.

Additionally, in recent years since the inception of the UPC, national courts have seen significant activity in relation to actions aimed at securing the lock-out effect on opted-out patents under Article 83.4 UPCA – a trend that may further intensify in the future.

One of the immediate points to be addressed to enhance the efficiency and user experience of the system is improving the handling of online case files. Significant expectations are placed in this respect on the new case management system anticipated to be operational later in 2025.

Additionally, a greater interaction between the panel and the parties during hearings would be beneficial. A mechanism to support this goal, which may be achievable across all LDs, could include the panel providing parties with a list of key questions (even refraining from setting out a preliminary view/opinion) ahead of the hearing. Inspired by practices in international arbitration, this would facilitate focused discussion without any risk of perceived anticipation of judgment by the panel.

Other, relatively more ambitious potential improvements to be considered include

• allowing a defendant to rely on invalidity arguments as a defence to infringement without requiring the defendant to file a counterclaim for revocation – doing so currently necessitates the payment of substantial court fees, which could discourage SMEs in particular from challenging the validity of a patent enforced and may be perceived as a limitation to the right of defence of the defendant; and
• expanding the scope of Article 49 of the UPCA to account for the possibility to designate a language of one of the contracting member states other than the language of the patent as the language of the proceedings.