1.1 What are the principal sources of law and regulation relating to patents and patent litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)
The principal source of law relating to patents in Italy is the newly enacted Code of Industrial Property (‘CIP’), which repealed and reorganised all prior legislation on industrial property, including the old Patent Law. The CIP entered in force on 19 March 2005.
Patent litigation follows the procedural rules set out under Law No 5/2003 (so-called ‘Company Proceedings’), which provided a new format of litigation for IP matters, including patent litigation, and applies to all proceedings commenced after 19 September 2005.
In addition, Italy is party to a number of international treaties regarding patent law, aimed at either setting a minimum level of protection in Member States (such as the Paris Union Convention, the Strasburg Convention or the TRIPs Agreement), harmonising patenting procedures (such as the PCT Agreement), or providing multi-jurisdictional protection (such as the European Patent Convention).
As a Member State of the European Union, Italy is also affected by Community legislation, and in particular by Directives (such as the recently implemented EC Directive No 48/2004 on the enforcement of IP rights) and Regulations (such as EC Regulation No 6/2002 on Community designs).
Court precedents are not binding for future cases between different parties. However, they may certainly have a persuasive effect for future decisions, especially in similar cases and if they represent consistent case law.
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
Whereas legislation prevails over case law, an established principle provides for the primacy of EU law, and in particular of EC Regulations as directly binding, over internal legislation, the former therefore prevailing in case of conflict.
2.1 In which courts are patents enforced? Are they specialised patents courts? If not, what level of expertise can a patent holder expect from the courts?
Civil litigation regarding IP matters – including patent litigation – has been recently concentrated in Italy in a limited number of courts (currently, 12 first instance tribunals and 12 Courts of Appeal), within which specialised sections have been set up for exclusively dealing with IP matters (the ‘IP Courts’). Whereas judges of the IP Courts do not normally have a technical background, it is customary – as provided by the laws – for the Court to appoint a technical expert to give an opinion in writing on matters of patent validity and/or infringement: during the investigation carried out by the Court expert to this purpose, the parties have the right to appoint their own technical expert that will be involved by the Court expert in a kind of ‘technical mini-trial’ (exchange of written briefs, experts’ meeting, and laboratory tests, where needed). At the end of this investigation, the Court expert will file his/her written report: while it happens in many cases that the Court follows the Court expert conclusions and arguments, it is not obliged to do so: in fact, there are quite a number of decisions where the Court did not follow the Court expert’s conclusions.
2.2 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
No doctrine of binding precedent is applied by Italian courts. Prior national court decisions may have, however, a persuasive effect on courts handling similar cases. A similar effect may be recognised also in relation to foreign precedents, which may offer guidance especially in matters not expressly considered by domestic legislation or case law.
2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg the Patent Office)?
Infringement and invalidity actions can be brought simultaneously before the same court and within the same proceedings. Indeed, a typical option of defence open to a defendant in infringement proceedings is to claim – where possible – nullity of the patent enforced by the plaintiff: this happens almost always where Italian national patents are involved, as they are granted without a previous substantial examination by the Italian Patent and Trademark Office (the ‘Italian PTO’).
The Italian PTO has no jurisdiction in respect of patent nullity claims.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
Parties to patent litigation must be represented by one or more attorneys admitted to the bar in Italy. In respect of any technical expertise which may be possibly – and is in most cases – resorted to by the Court during infringement or invalidity proceedings, parties may also be represented by patent attorneys or other technical experts for addressing the relevant technical issues with the Court-appointed expert.
2.5 What is the language of the proceedings? Is there a choice of language?
The official language of the proceedings is Italian, with no other choice. As a consequence, courts – or the other party to court proceedings – may require that any documents drafted in a foreign language be filed together with a sworn translation. Sometimes, however, IP Courts do not request translations of documents in English or French, as they can directly understand them.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
Cross-border injunctions in IP matters have been rarely issued by the Italian courts, starting with a landmark precedent by the Court of Bolzano of 21 April, 1988, in respect of protected geographical indications. There appear to be no specific precedents on cross-border injunctions actually issued in respect of patents: however, the general admissibility of such measures in patent litigation has not been expressly excluded, but rather implied by some case law precedents dealing with this topic and is the object of debate in legal writing.
Whereas issues of patent validity pertain to the exclusive jurisdiction of the courts of the state of filing or registration (Art 22.4 of EC Regulation No 44/2001), cross-border injunctions in respect of patent infringement issues may be based on the provision allowing the request of preliminary relief before the courts of a Member State even if the courts of another Member State have jurisdiction on the merits (Art 31 of EC Regulation No 44/2001). In a significant precedent, the requested cross-border injunction has however been rejected because proceedings were pending in the relevant foreign jurisdictions on either patent infringement or validity, this implying that the measure requested would have been either duplicated or nullified depending on the results of the relevant foreign proceedings. In addition, difficulties may follow in respect of European patents from the provision of Art 64.3 of the European Patent Convention, under which the infringement of the national portion of a European patent is ascertained according to the laws of the country in which infringement is claimed: therefore, if one court had multinational jurisdiction, it should apply to each foreign patent the applicable foreign national law.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
To start with, we would remind readers that ‘torpedo’ actions were typically brought in Italy to try to take advantage of the length of patent litigation here: now, however, after the establishment of the new IP Courts and with the use of the new Company Proceedings, the duration of patent litigation is much shorter, so that this advantage is almost non-existent.
Most recent Italian precedents have also shown the courts’ negative attitude towards ‘torpedo’ actions.
‘Torpedo’ actions – aimed at blocking infringement proceedings by seeking a declaratory judgment of non-infringement before the courts of a different country, typically of the country of the alleged infringer – are based on the special jurisdiction provision of the Brussels Convention (now EC Regulation No 44/2001) in respect of tort liability, allowing plaintiffs to sue before the courts of the place where the harmful event occurred (or may occur, in the new version of the Regulation). Recent Italian precedents, following the case law of the European Court of Justice, underlined the fact that the general principle of domicile of the defendant as the basis for jurisdiction cannot be prejudiced by too wide an interpretation of the cases of special jurisdiction. In particular, according to such precedents, special jurisdiction for tort liability would not help in establishing an action for non-infringement, as in such a case no unlawful behaviour and no harmful event is claimed to occur by the plaintiff, who claims exactly the contrary.
As a consequence, the above case law would lead to the blocking effect of ‘torpedo’ actions not being permitted on the grounds of lack of jurisdiction when the non-infringement action is commenced in an EU Member State where the patent holder is not domiciled.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
Patent infringement is established when the inventive idea object of the patent – as resulting from interpretation of the patent based on the claims, the description and the drawings – has been reproduced in its essential elements. Literal reproduction of all elements of the inventive idea is therefore not strictly necessary, but there will be no infringement if only one of the features of a claim is reproduced and this feature is not essential to the patent.
Under the doctrine of equivalents Italian case law accepts that patent infringement may also be established when the inventive idea underlying the patent is reproduced not by literally using the same elements claimed under the patent, but through equivalent means which have the same function and produce a corresponding result. The approach of the case law precedents on this topic tends to be quite stringent in an attempt not to excessively broaden the scope of protection of the patent, which is why the assessment is based on a case-by-case evaluation avoiding the use of general principles.
An alleged infringer will try to refute allegations of infringement of the patent by raising exceptions of non-infringement and/or invalidity, or by seeking a declaratory judgment of non-infringement and/or counterclaiming invalidity of the patent enforced. Whereas such defences may be raised only by way of exception within preliminary proceedings, they may be the object of actual claims or counterclaims seeking a declaratory judgment of non-infringement and/or invalidity within main proceedings on the merits.
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
A typical case of patent enforcement liable to amount to an antitrust violation is given when the patented technology is part of a compulsory standard. In this respect, recent case law has recognised, on the basis of domestic antitrust legislation, a duty on the patent holder to grant licences to third competitors on a reasonable and non-discriminatory basis.
A patent can be invalidated on the following grounds:
It is a matter of discussion whether the above list is to be considered exhaustive. The prevailing opinion is however in favour of its exhaustive character.
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
A patent can also be partially invalidated by a court, in which case the decision will provide for a limitation of the patent. As a consequence, one or more patent claims will need to be either reduced or reformulated by filing a corresponding application with the Italian PTO.
As a general rule, an invalid patent may produce the effects of a different patent (eg a utility model) of which it meets the validity requirements and which can be considered to have been applied for by the applicant if it had known of the invalidity of the original application. A corresponding request for conversion of the invalid patent must be made – at any time and in any instance of the proceedings – by the patent holder. Upon assessment of the relevant requirements, the court orders the conversion of the invalid patent and the patent holder must file a corresponding application for amendment of the patent within six months of the decision becoming final. If the conversion of the patent implies a longer term of protection, licensees, and those who had made substantial investments to use the object of the patent in view of its imminent expiry, are entitled to obtain a compulsory, royalty-free and non-exclusive licence for the longer new term of protection (see Art 76 CIP).
Official amendments to patent claims must be filed with the Italian PTO by requesting a limitation of the patent. However, the request cannot be accepted by the PTO while nullity of the patent is being claimed before a court of law and until the relevant decision has become final, or if other parties owning registered rights on the patent do not consent to limitation (Art 79 CIP).
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg expiry of time limit)?
Enforceability of a patent implies that it has legal effects against third parties. A patent has effect from the date on which the relevant application with the attached description and drawings are made accessible to the public (18 months from filing or from the priority date, or 90 days from filing if the applicant has declared in the application that it be made immediately available to the public). It is however possible to anticipate the effects in respect of third parties on which the application has been formally served together with the description and the drawings, in which case the effects of the patent date back to the date of service on such third parties. Protection lasts for a period of 20 years from filing.
The law also provides for specific cases in which the conduct of the owner affects enforceability of the patent, as in the case of failure to pay the annual taxes (forfeiture: Art 75 CIP) or to carry out the invention object of the patent within given terms (compulsory license and forfeiture: Art 70 CIP). Annual taxes have been recently repealed in Italy, but are expected to be reintroduced.
3.8 Can a patent holder bring a law suit claiming both patent infringement and unfair competition for the same set of facts?
There is no doubt that a patent holder may bring a law suit for unfair competition in addition to patent infringement on the basis of a different set of facts (eg claiming that the infringer’s products not only infringe the patent, but are also liable to cause confusion on the market with the patented products of a competitor because of their shape, colour or other distinctive elements). It is however disputed whether patent infringement would be per se sufficient to establish unfair competition. This has been admitted by a number of precedents, but is excluded by the prevailing case law by underlining that a claim for unfair competition only based on patent infringement would be absorbed by the patent infringement claim. The main argument used in prevailing legal writing against the possibility of considering patent infringement as an act of unfair competition is based on the consideration that this approach would risk allowing an unjustified patent protection beyond its statutory time limits.
4.1 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
An action for patent infringement may be brought by either the owner of the economic rights on the patent (whether the original owner or the assignee) or the licensee (whether exclusive or, under certain conditions, non-exclusive: see below).
The distributor, not being the owner of any rights on the patent, cannot sue for patent infringement.
As no specific rule is provided by the law in respect of actions by the licensee, some case law precedents have not allowed an infringement action to be brought by a non-exclusive licensee and have required that the action be brought jointly by the patent owner and the nonexclusive licensee.
No registration of the licence is needed to allow the licensee to sue. The existence of the licence can be proved by any means, including presumptions (eg a licence would be presumed in case of a joint action or where the patent holder is the legal representative of the company using the product claimed in the patent).
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
A law suit to obtain a declaratory judgment on non-infringement can be brought only by an alleged infringer, ie by a person against whom the patent holder has already raised claims for patent infringement (eg through a cease and desist letter). Such claims may be also indirect, as in the case where the patent owner has raised claims for patent infringement only against the distributor or final clients, and not directly against the producer: in such a case, the action for declaratory judgment on non-infringement may be also brought by the producer, in addition to the distributor, as claims for patent infringement in respect of distribution of infringing products necessarily extend to their production.
4.3 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
Any person participating in the production, use or sale of the patented product or process can be sued for patent infringement (eg the producer, the distributor, the retailer, the person showing the infringing products at a trade fair, the person buying and using the infringing product in its industrial activity, etc).
Company directors cannot be sued personally unless the alleged infringing activity is claimed to refer to them personally and not as legal representatives of the company.
Under the doctrine of contributory infringement, Italian case law has in a few instances accepted – failing an express provision under the law – that a producer and/or supplier of non-patented components, to be used within a patented product or method, may be held jointly liable for patent infringement together with a third party to which those components are delivered and by which they are used within the product or method carrying out the inventive teaching of the patent. This joint liability is based by the case law on the general principles of tort liability as wilful or negligent contribution to the infringement committed by a third party. This is established, in particular, when the producer and/or supplier is aware, or is to be considered under the circumstances aware, of the univocal destination of those components to the patent infringement committed by the third party. Such univocal destination is, in its turn, established when those components may not be lawfully used for any other purpose or, if this is the case, when they are expressly produced and/or supplied with reference to the patented product or method and with the univocal and intentional destination to carry out the inventive teaching of the patent.
Third parties may intervene in pending proceedings either on a voluntary basis (eg the patent holder when the action has been commenced by the licensee) or by order of the judge (eg when the plaintiff failed to extend the nullity action to all persons registered as owners of rights on the patent). Rules of procedure provide for stringent time-limits for the intervening party to raise or support claims in the proceedings, depending on the various situations.
Subtraction of parties during litigation is possible not as a general principle, but only in specific cases provided under the law and upon order of the judge (eg when the guarantor intervenes and agrees to continue litigation in place of the guaranteed party, or when the right which is the object of litigation is assigned during the proceedings and the new owner intervenes: in both cases the consent of the other parties to the proceedings is required).
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
A wide range of options are open to a patent holder to enforce its rights, including civil proceedings, criminal proceedings, border measures and, as the case may be, arbitration.
Criminal prosecution in respect of patent counterfeiting or infringement may be based both/either under:
Whereas in the latter case criminal prosecution must be requested, and may be later stopped, by the right owner, in the first case prosecution can also be initiated by the Public Prosecutor on its own motion.
It must be stated that the relationship between the aforementioned two provisions, which clearly overlap, is very much unclear and disputed. A very widely accepted doctrine claims that Art 473 of the Criminal Code only applies to counterfeiting of the patent certificate, whereas Art 127 of the CIP applies to cases of wilful infringement of the content of the patent.
Seizure of imported infringing products may be obtained through the Customs authorities following the procedures provided under EC Regulation No 1383/2003. Under this Regulation, Customs authorities are required – where they ascertain that the goods in transit may infringe an IP right, usually upon consulting the rightholder – to suspend release of or detain same goods, informing promptly the relevant rightholder. The rightholder has 10 working days – which in justified cases may be extended by a further 10 working days – to inform the Customs authorities that infringement proceedings have been initiated before the competent civil or criminal courts. In case of blatant counterfeiting, the Customs authorities must also inform the Public Prosecutor thereby initiating criminal proceedings. Failing any such proceedings, either civil or criminal, the goods are released. The application for Customs action may be lodged by the rightholder in advance of intervention by the Customs authorities or upon notification by the Customs authorities of suspension of release or of detention. In the latter case, the application of the rightholder must be lodged within the following three working days from notification. Simplified procedures apply under the above EC Regulation to obtain destruction of the goods seized.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a patent invalid?
Arbitration in respect of IP matters has recently been expressly provided for under the new Code of Industrial Property. Arbitration is therefore available also in respect of patent litigation, as it was generally admitted under prior legislation at least in respect of patent infringement issues. Doubts have been raised in the past as to whether arbitration is available in respect of patent invalidity issues: this has been generally excluded and admitted only in isolated case law by underlining that the arbitral decision on invalidity would only have effect between the parties (ie not erga omnes). This issue is not expressly dealt with by the new CIP, which however allows the overcoming of one of the major arguments against arbitration on patent invalidity under the old law, ie the compulsory participation of the Public Prosecutor in patent invalidity proceedings, which has now been repealed. However, the other major hurdle to arbitration on patent invalidity issues, ie the fact that only a court may issue an invalidity decision with effect erga omnes, has not been expressly amended by the new legislation. Thus, it remains to be seen how the case law will apply the new rules in respect of this issue.
Specific cases of arbitration and mediation are provided under the law when an agreement is not reached by the parties and for limited purposes, eg for determining the equitable fee to be paid in some cases to employee inventors or the indemnity to be paid in case of expropriation, or within proceedings for obtaining a compulsory licence.
The format of patent infringement proceedings has recently been changed substantially, so as to ensure that patent litigation – and, more generally, IP litigation – be handled within short and concentrated proceedings.
This format differs significantly from ordinary civil proceedings in that the parties are requested, before discussing the case in court, to exchange with each other their respective summons and briefs within a short time (the minimum terms are 60 days from service of the deed of summons for the defendant to serve its brief of appearance to the plaintiff; 30 days from service of the defendant’s brief of appearance for the plaintiff to serve in its turn a reply brief; 20 days from service of any further reply brief for the other party to serve any additional reply thereto).
The exchange of briefs between the parties may be interrupted by any of them – after service and filing of the plaintiff’s deed of summons and the defendant’s brief of appearance
– by requesting the court to schedule a hearing. At this hearing, the case is discussed and evidence is gathered, where appropriate with technical expertise, at the discretion of the court. If evidence is gathered, a further hearing is scheduled within 30 days for further discussion on evidence. A decision is then taken by the court either at the end of the hearing or within the following 30 days.
Cases regarding IP matters – including patent litigation – are decided by a panel of three professional judges.
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
The parties may file documents in support of their claims and exceptions until service by either party of the request to schedule the hearing for discussion of the case.
Affidavits, and in general sworn declarations by third parties, have the same value as any other written document and must be confirmed by oral witnesses if the other party so requests.
Witnesses must be indicated by the party requesting that they be heard by the court, also indicating the actual questions on which they will be asked to respond. In civil litigation, it is not possible to cross-examine witnesses, but the court may – on its own motion or upon the parties’ request – ask the witness to clarify specific facts and/or confront them with other witnesses in case of contrasting statements.
Technical expertise is usually resorted to by the court in patent matters, with a view to having validity and/or infringement issues assessed by an expert. The court-appointed expert may receive from each party documents pertaining to the scope of the technical expertise and shall make them known to all parties, and carries out his/her technical assessment by allowing the parties to contribute through private experts who would typically file and exchange their respective technical briefs.
6.4 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
Discovery, whether before or during trial, is not permitted as a general rule under Italian law. To a limited extent, however, specific mechanisms for obtaining evidence from the adverse party or third parties are available as a preliminary relief and within proceedings on the merits.
As preliminary relief, the patent holder may apply to obtain a description of the allegedly infringing products and of the evidence relating thereto, including invoices, accountancy, production drawings, etc (see below). As preliminary relief available against piracy, the applicant may request, upon supplying evidence of circumstances likely to endanger his/her recovery of damages, preventive seizure of the assets of the infringer, including the blocking of its bank accounts up to the amount of presumed damages; in this regard the court may order the communication of bank, financial or commercial documents, or appropriate access to the relevant information.
Within proceedings on the merits, the judge may order the defendant, upon the plaintiff’s request, to exhibit documents or information in respect of which the plaintiff has provided sufficient circumstantial evidence. In such a case, the judge may also order the defendant to provide all appropriate elements to identify other subjects involved in production and distribution of the infringing products, as well as to exhibit commercial and financial documents in case of infringement committed on a commercial scale through acts of piracy.
Both within preliminary proceedings and proceedings on the merits, the judge may also order the defendant or third parties involved in the production, manufacture or distribution of infringing goods or services, upon justified and proportionate request of the plaintiff, to provide information on the origin and distribution networks of the same (so called ‘right of information’). The plaintiff must indicate the persons to be heard and the facts on which they will be questioned by the court. Where the person being deposed refuses to respond or supplies false information, he/she will be subject to criminal sanctions.
6.5 What level of proof is required for establishing infringement or invalidity?
The plaintiff must provide full evidence in support of its claims following the principle of the burden of proof, whereby each party must prove the facts on which its claims and/or exceptions are based. The decision of the court must then be based on the evidence provided by the parties only.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
Recent legislation providing for a new format of IP litigation and for the exclusive jurisdiction of specialised IP Courts has significantly expedited the length of patent infringement proceedings, which typically last from a few months to one or (maximum) two years, depending on level of complexity of the issues involved and on the need for technical expertise (as well as subject to the Courts’ workload).
6.7 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?
In view of the new format of patent litigation recently introduced, the defendant is not left with many options in seeking to delay the proceedings, other than raising all available exceptions. Indeed, after exchange of the first briefs, plaintiff may request the court to schedule the hearing for discussion of the case.
Proceedings can be stayed upon joint request of both parties for no more than four months. In addition, the court must stay proceedings when the decision of the case depends on the decision of a different case already pending.
The main option available to the plaintiff to expedite the proceedings is to request the court to schedule the hearing for discussion of the case after receiving service of the defendant’s brief of appearance.
7.1 What remedies are available against a patent infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?
The remedies available against a patent infringer are final injunction with provision of a penalty, final removal from the market, destruction, assignment to the patent holder of the infringing goods, publication of the decision, damages.
Destruction of the infringing goods cannot be ordered if this is prejudicial to the national economy, in which case the patent holder is only entitled to damages. If the infringing goods may be lawfully used subject to their modification, the court may order their provisional recall with the possibility of putting them back on the market when modified, instead of their destruction and final removal.
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
The injunction, as well as the removal from the market, whether final or provisional, can be ordered against the infringer or any intermediary who is party to the proceedings and whose services have been used to commit the infringement. Therefore, only suppliers and customers that were party to the proceedings will be bound by the injunction.
7.3 What monetary remedies are available against a patent infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?
In assessing damages, the court has to take into account all appropriate elements, such as the negative economic consequences, including lost profits, which the rightholder has suffered, the profits made by the infringer and, where appropriate, elements other than economic factors, such as the non-monetary prejudice caused to the rightholder by the infringement (eg damage to commercial reputation, tarnishment, defamation, other moral damages).
The court may also set damages as a lump sum, in which case the lost profits are determined in an amount which cannot be less than the royalties which would have been due if the infringer had obtained a regular licence at market rates. In determining the royalty to be paid by the infringer, recent case law has in several instances applied an increased royalty, usually by half, as compared to usual market standards, so as to take into account all the costs normally borne by a regular contractual licensee (eg advertisement obligations, quality controls, minimum guaranteed royalties and so on).
In any event, the rightholder may request the reversion of profits made by the infringer as an alternative to recovery of the lost profits or in addition thereto in as far as they are in excess of lost profits.
Punitive damages are not available under Italian law.
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
Preliminary relief is available both before and during proceedings on the merits. In particular, the rightholder may request description, seizure, removal from the market of the infringing products, injunction with provision of a penalty, seizure of assets to ensure recovery of damages in specific cases, publication of the decision. In order to obtain preliminary relief, evidence must be given of both:
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
Preliminary relief may be also granted ex parte, ie without having previously heard the party against which the measure is directed, but only in circumstances in which hearing the other party would prejudice the enforcement of the measure requested. In such case, with the same order the judge schedules a hearing for appearance of both parties, to be held within the following 15 days and at which the order already issued may be confirmed, modified, or revoked.
8.3 Is plaintiff entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accountancy relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
With a motion for preliminary relief, the plaintiff may also request description of the infringing products and of the relevant means of production as well as of any other evidence relating to the alleged infringement, such as accounting and commercial documents, production drawings, etc. Typically, proceedings for description are commenced in order to obtain pre-trial evidence of infringement (provided the requirements for preliminary relief are met) and in order to use such evidence within the action on the merits to follow. The order for description cannot be appealed against. If no infringement is shown as a result of the description operations, the claimant is subject to possible liability for damages, provided that the other party pursues this claim and gives the necessary evidence within a subsequent action on the merits. In view of possible liability for damages, the judge may order the applicant to provide a security.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
Invalidity of the patent within preliminary proceedings can be raised by the defendant as an exception against the infringement claim and, where supported by adequate evidence, must be taken into account by the court. An interlocutory decision of the court on invalidity during the preliminary proceedings cannot become res judicata. A final decision stating invalidity of the patent and ordering its cancellation may only be obtained within subsequent proceedings on the merits.
Upon application by the rightholder seeking preliminary relief, the court schedules at short term a hearing for appearance of the parties, at which the case is discussed and, where needed, evidence is gathered on an informal basis. The order is issued at the end of the hearing or, in most cases, shortly thereafter.
When hearing the other party would prejudice the enforcement of the measure requested, the order may be issued ex parte and a hearing is scheduled within the next 15 days for discussing the case with both parties with a view to confirming, modifying or revoking the order.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
During preliminary injunction proceedings evidence is gathered on an informal basis in view of the urgency to proceed. Whereas affidavits have in principle the same value of other documents filed by the parties, any witnesses or persons informed of the facts at issue may be heard, where deemed appropriate by the judge, with no formalities at the hearing for discussion of the application. Court-appointed or private experts may be used if the judge deems appropriate to resort to technical expertise on technical issues regarding infringement and/or validity of the patent enforced: in these cases, however, normally the terms granted to the expert to evaluate the matter are rather short.
As Italian patents are not previously examined by the PTO on substantial validity, it may be wise to file a pro-veritate opinion by a patent attorney that examined the patent and the relevant prior art and concluded for its validity.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
Prima facie evidence is required and sufficient within preliminary proceedings.
Preliminary proceedings typically last from two to three weeks, up to a maximum of two to three months, depending on whether or not the measures are granted ex parte and whether or not the judge resorts to technical expertise.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
Upon issuing an order for preliminary injunction, the judge sets a deadline within which the parties must initiate proceedings on the merits. Where the judge does not set a deadline, proceedings on the merits must be commenced within 20 working days or 31 calendar days, whichever is the longer. In case of order for description, proceedings on the merits must be initiated within 30 days.
If proceedings on the merits are not initiated within the applicable deadline, or if proceedings on the merits are extinguished after their commencement, the preliminary injunction loses its effect.
This rules does not apply in respect of urgency measures granted under Art 700 of the Code of Civil Procedure (which apply mainly to unfair competition claims) and of preliminary relief anticipating the effects of the decision on the merits (see Art 131 CIP): in these cases either party may commence proceedings on the merits, failing which an agreement on stabilisation of the preliminary relief will be implied. As this provision of law is brand new and a bit unclear and apparently contradictory, clarification from case law is awaited as to the scope of its application.
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
The appeal against a first instance decision must be lodged before the specialised section for industrial property matters of the Court of Appeal within 30 days of service of the decision to the losing party or, in default of service, within one year of publication of the decision (the term is suspended for 45 days between 1 August and 15 September each year, so lasting in effect one year and 45 days).
The appeal against a preliminary injunction must be filed before a panel of three judges of the same IP Court within 10 days of communication of the order.
Both the appeal against a first instance decision and the appeal against a preliminary injunction involve a new consideration of the facts and the points of law of the first instance decision, with the exclusion of new claims. However, whereas an appeal on the merits implies stringent limitations on the filing of new evidence, the appeal against a preliminary injunction allows filing of new documents.
9.2 How long do appeal proceedings typically last?
Appeal proceedings on the merits typically last from 12 to 18 months.
Appeal proceedings on preliminary relief typically last from one to two months. Additional time may be needed if technical expertise is resorted to in the course of the appeal proceedings.
10. LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
Litigation costs largely depend on the complexity of the case, which in patent litigation plays a major role. Under normal circumstances, legal costs for an action on the merits may vary from €50,000–150,000 in the first instance and from €30,000–70,000 in the second instance. Costs for preliminary proceedings may vary from €25,000–60,000 in the first instance and from €15,000–35,000 in the second instance. The above costs do not include the fees of technical experts, if any, nor other costs such as prior art searches, translations, travel, and others.
10.2 Are costs recoverable from the losing party?
As a general rule, the winning party is entitled to recover its legal costs from the losing party, but this is a matter where the court has a large discretionary power. In particular, the court freely liquidates the amount of legal costs to be reimbursed by the losing party (which are usually much lower than the actual amount of legal costs borne by the winning party) and may set off legal costs between the parties in case of particular complexity of the issues involved. In general, normally only 30–60% of actual legal costs are recovered by a winning party.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
Patent law – and more generally intellectual property law – has been recently affected in a significant way by new legislation, providing for a unique body of substantive rules and a new format of litigation. Current discussions are mainly focused on the new legislation, its interpretation and effects.
Certainly, implementation of a number of EU Directives, the last one being the Enforcement Directive (2004/48/EC), has recently provided much more effective means to gather information from the infringer and to liquidate damages, so making it much easier to counter any unlawful activities affecting IP rights.
Moreover, it has been noted that IP Courts are much more efficient in acting quickly and liquidating substantial damages.
It could be concluded that, under the new provisions, Italy has certainly become a very interesting forum for patent litigation and the time of the ‘torpedo’ actions are clearly over.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
New legislation has been recently enacted in respect of patent law – and more generally intellectual property law – through the Code of Industrial Property, which entered in force on 19 March 2005 and has been amended since, recently by implementing EC Directive No 48/2004 on the enforcement of intellectual property rights.
In addition, a new format of IP litigation – including patent litigation – has been in force since 19 September 2005. This has significantly affected the efficiency and duration of first instance proceedings.
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
Scuffi, Franzosi, Fittante, Il Codice della Proprietà Industriale (CEDAM, Padova, 2005)
