International Patent Litigation in Italy

The proprietor of a patent may bring proceedings for patent infringement. If the patent is owned by two or more parties, in principle each co-owner may start legal action against third parties in order to defend their rights.

Exclusive licensees also have the right to bring proceedings for patent infringement, provided that the infringement is within the scope of the license. The right of nonexclusive licensees to sue is still a controversial issue. However, it is undisputed that they may intervene in proceedings commenced by the patent’s proprietor.

Yes, it is possible to join any number of parties as a defendant in the same proceedings. The plaintiff may commence the action against more than one party.  The Court also has power to add further parties to the proceedings when their appearance is necessary to resolve the dispute.

Yes, all the subjects who have taken part in the production and / or distribution chain of infringing products may be joined to the proceedings.

There is a limitation period of five years from the date of the infringing act in patent infringement claims where damages are sought.

No, under Italian law there is no requirement to invoke all potentially infringed patents at once. However, invoking all potentially infringed patents in the same proceedings is possible, if the requests formulated by the patents’ owner are based on the same facts and legal issues.

In Italy, infringement and invalidity proceedings must be brought before the divisions specialised in entrepre neurial matters of the Court that has territorial jurisdiction (e.g. Court of Rome, Court of Milan etc.). Validity and infringement can be decided in the same proceedings.

Yes, Italy takes part in the UPC.

Yes, it is possible to apply for a declaration of non-in fringement, provided that the plaintiff has a legal interest in such a declaration. Such an interest occurs, for example, when a third party alleges that a patent infringement occurred or threatens to commence patent infringement proceedings. A declaration of non-infringement may be requested also by the means of an urgency proceedings.

Patent litigation in Italy is conducted by means of written submissions and a series of hearings. A compulsory term of 90 days (if the defendant resides in Italy) or 150 days (if the defendant resides outside of Italy) must elapse between the serving of the writ of summons and the first hearing indicated in the summons. However, the first hearing indicated in the summons is usually postponed to a different date according to the availability of the appointed judge.

Trials in patent cases until a first instance decision take between two to four years depending on the complexity of the case and on the duration of the investigation phase.

The Italian Courts have divisions that are composed of judges who are experts in entrepreneurial matters (including IP matters). However, Italian judges do not have scientific qualifications: therefore, technical assessments are usually carried out by experts appointed by the judge in charge of the patent case.

Italian law does not have any specific rule on this. However, according to some recent Court decisions, rules concerning the stay of litigation proceedings in case of procedures pending before the Italian Office  for Patents and Trademarks apply by analogy also in case of procedures pending before the EPO.

Yes, an action aimed at obtaining a declaration of nullity of a patent may be exercised by whoever has a legal interest in doing so, independently of the fact that a patent infringement case has been started by a third party. An action aimed at obtaining a declaration of nullity of a patent can be brought also by the competent Public Prosecutor.

FRAND license

Filing an action for a FRAND license is legally possible. However, FRAND licensing is mainly used as a defence argument in infringement proceedings started by the patent owner, by invoking the patent owner’s obligation to grant a right the use of its patent under FRAND conditions.

Compulsory license

According to Italian law, one who wishes to obtain a compulsory license must start proceedings before the Italian Office for Patents and Trademarks, by submitting a grounded request which must indicate the amount and method of payment of the compensation offered.

The Office shall promptly give notice of the request to the owner of the patent and to those who have rights on the patent (based on acts that have been registered or annotated). These subjects are entitled to oppose the application or the amount and method of payment of the compensation proposed by the applicant within 60 days. In case of opposition, the Office, within 45 days from the expiry of the above term, shall summon the parties to attempt conciliation. The applicant may file a brief by the fifth day prior to the date of the meeting scheduled for the conciliation attempt. Within 45 days of the meeting the Ministry of Economic Development will decide whether to grant the compulsory licence or reject the application.

The proceedings shall be concluded within 180 days from the filing of the application.

Compulsory licenses may be requested for dependent patents or in case of lack of implementation by the owner of the patent or its successor in title.

Starting from July 2021 compulsory licenses are possible also in case of national medical emergencies to address proven difficulties in the procurement of specific drugs or medical devices deemed essential. In such a case the license is granted by the Ministry of Health together with the Ministry of Economic Development.

Yes, a party can invoke the FRAND defence to paralyse the requests of the patent’s owner in patent infringement proceedings. The determination of the FRAND rate by the Courts is legally possible.

Yes, in patent infringement cases parties are entitled to appoint one or more experts to support their arguments and in addition, the judge may appoint its own expert. The judge will only appoint more than one expert in exceptional cases. Both the parties’ experts and the expert appointed by the judge must file written reports containing their technical opinions. If requested by the judge, the experts may also have to appear at oral hearings in order to clarify their findings.

If the production of specified documents is necessary for the resolution of the dispute, upon a party’s request, the Court can order the disclosure / discovery of said documents.

Italian law does not provide for preliminary discovery of documents. However, the preliminary description and / or seizure of specific documents is possible and may be authorised by the Court if the documents in question.

First instance decisions may be challenged before the competent Courts of Appeal. Second instance decisions may be challenged before the Supreme Court. A first instance decision may also be challenged directly before the Supreme Court if the first instance Court wrongly applied specific rules and the parties agree to renounce the second instance proceedings. An appeal against a first instance decision must be lodged within 30 days from the service of the decision by the winning party. An appeal against a second instance decision must be filed within 60 days from the service of the decision  by the winning party. In both cases, if the decision has not been served, the term is equal to six months from the publication of the decision. The above terms are suspended each year from 1 August to 31 August

An appeal against a first instance decision may be brought if the first instance Court wrongly interpreted the facts or breached the applicable procedural or substantive rules. In the appeal phase, it is (usually) not possible to raise new objections or to submit new evidence.

At the beginning of the appeal stage, the Court of Appeal must carry out a preliminary assessment of the likelihood of the appeal being granted. If there is no reasonable probability of such, the Court of Appeal will declare the appeal to be inadmissible. An appeal against such a declaration may then be filed with the Supreme Court.

An appeal to the Supreme Court may be filed, inter alia, in circumstances when the law has been applied incorrectly or where there was a lack of examination of a fact raised by the parties and relevant to the decision.

Approximately five years for the first appeal to the Court of Appeal and two years for a second appeal to the Supreme Court.

No, as a general rule, the first instance decision is immediately enforceable, and its enforceability is not suspended while an appeal is pending. However, if serious and well-founded reasons occur, upon request of the losing party, the Court of Appeal may suspend the enforceability of the first instance decision.

It is very difficult to estimate the legal costs without knowledge of the particular case. However, as a general guide, costs for patent litigation proceedings are usually between seventy thousand euros (70,000 EUR) to one hundred and fifty thousand euros (150,000 EUR) for a  first instance decision.

As above, it is difficult to estimate these costs without knowledge of the particular case. However, costs for patent litigation proceedings are usually between fifty thousand euros (50,000 EUR) to one hundred thousand euros (100,000 EUR) for the first appeal and approximately equal to eighty thousand euros (80,000 EUR)  for the appeal to the Supreme Court.

As a general rule the judge, in rendering the decision, orders the losing party to reimburse the legal costs and fees anticipated by the winner party. However, based on a case-by-case assessment the judge is entitled to allocate costs and fees differently, for example by deciding that each party shall bear its own costs. The quantification of the legal fees is made by the judge by taking into account the rates indicated by the law.

There are two options for alternative dispute resolution: arbitration and mediation. Arbitration is commonly used, but mediation is rarely used in IP matters. In order to submit a dispute to arbitration there must be an arbitration agreement between the parties. The arbitration agreement must be in writing and must clearly set out the subject-matter of the dispute.

No, in IP matters the Court does not require the parties to consider alternative dispute resolution options.

The court may order:

• that the defendant ceases the infringing acts;
•  the destruction of the infringing goods;
• the assignment of the infringing goods (and /  or the machines or tools used to make them)  to the claimant;
• the seizure of all infringing goods (and / or the machines or tools used to make them);
• the payment by the infringer of the damages suffered by the patent’s owner;
• the publication of the judgment in newspapers  and magazines;
• the payment of penalties for any further infringement.

No, automatic injunctions are not provided by Italian law.

Damages are assessed by taking into account all the negative economic consequences, including the loss of profit, suffered by the owner of the patent, any unfair profit made by the infringer, and, in some cases, other elements such as moral prejudice.

Any loss of profit awarded must not be lower than the royalties that the infringer would have paid if it had obtained a license from the owner of the patent. There is no specific rate for such royalties. The rate must be assessed by the Court on a case-by-case basis. The owner of the patent can request a refund of the profits made by the infringer as an alternative to compensation for loss of profit or the amount exceeding such compensation.

The party alleging the infringement must prove its occurrence and the extent of damages requested. However, if it is not possible to exactly quantify the damages, they can be assessed by the Court based on an equitable assessment. Separate proceedings to determine the level of damages payable are also possible.

No additional remedies are available if the infringement was deliberate.

An order to recall infringing products from the market may be issued in the judgment that determines the infringement of an industrial property right. No specific limitation in time is provided.

Yes. However, Courts may grant urgency measures only if the following two requirements are met:

• the probable existence of the right enforced (socalled fumus boni iuris);
• a pending or imminent infringement (so-called periculum in mora).

In this respect, it is recommended that urgency proceeding are started soon after the awareness of the infringement by the IP rights’ owner. However, according to the majority of case-law, urgency proceedings may be started even if some time has elapsed from awareness of the infringement, provided that the “market relationships” between the parties (i.e. the parties market shares) are not steady yet.

Yes, if serious urgency reasons occur and the involvement of the counterparty in the proceedings could jeopardise the implementation of the Court’s decision, the judge, taking summary information (if necessary), can issue a decree inaudita altera parte (i.e. without notice). However, with the same decree, the judge shall schedule the hearing for the appearance before the Court of all the parties within a term no longer than fifteen days and shall assign to the claimant a term no longer than eight days for the notification of the claim and the decree to the adverse party. At the hearing, the judge may confirm, modify or revoke the decree. If the notification must take place abroad, the terms referred to above are trebled. Italian Courts are very strict in assessing the urgency requirements: therefore, decisions inaudita altera parte are issued only in exceptional cases.

Preliminary injunctions are obtained within approximately two to four months from the filing of the application. However, the achievement of a preliminary injunction in patent cases, where technical investigations are usually required, can take longer.

An appeal against a preliminary injunction can be filed within 15 days from the date the preliminary injunction was granted at the hearing or from the date the injunction was served or communicated. The appeal does not automatically suspend the effect of the injunction. However, suspension of the injunction may be ordered by the Court when its enforcement could cause serious damage.

If a party is awarded a preliminary injunction, it is not automatically liable to provide security. However, the Court may order the successful party to provide security if it is appropriate based on a case-by-case assessment.

To prevent interim measures from losing their effect, merit proceedings must be commenced within the term established by the judge in issuing the interim measures. If no term is established by the judge, merit proceedings must be commenced within the term of twenty working days or thirty-one calendar days if these represent a longer period. The term runs from the pronouncement of the order if it is made at the hearing or, otherwise, from its communication. However, if the interim measures are suitable for anticipating the effects of the judgement on the merits, further proceedings on the merits are not compulsory.

No. Decisions of the national Courts only have effect within Italy.

No, Anti-Suit-Injunction is not available under Italian law.