Litigation / Foreign Patent Litigation / Italy

Patent Litigation in Italy

Italian courts can deal with both infringement and validity issues in the same case. The court tends to rely heavily on the opinion of its expert in making a decision.

Points of Substantive Law

The way in which claims will be construed in Italy in the future is still to be determined. Traditionally, protection in Italy did not rely particularly heavily on the claims, but rather on the court's understanding of the patented invention based on a reading of the claims and specification. As a result of the harmonization of laws that has occurred in Europe in the wake of the European Patent Convention, however, the scope of protection is now to be based on the claims.[1]

Infringement Actions

Patent infringement actions in Italy are brought in the district court (Tribunale) where the defendant has its legal seat or the district where infringement occurred. For defendants not domiciled in Italy the Rome court has jurisdiction. In practice, however, most patent cases in Italy are heard in Milan. Audience before the courts is by civil lawyers only.

The Tribunale are three judge courts, although the preliminary work prior to coming to a decision is normally handled by a single judge.

The Italian legal system is sometimes referred to as being inquisitorial as opposed to the adversary system in common law countries. So far as civil cases are concerned, this is not strictly true since a case will only start and proceed to trial if at least one party continues to pursue it. What is true, however, is that in Italy the court itself or court appointed experts are much more involved in the development of the case than in the other G-7 countries.

In Italy, like France, it is possible to request the court for a order to inspect a suspected infringer's premises. In Italy it is in principal also possible to seize all relevant evidence.[2] Since this may have the effect of putting the defendant out of business immediately, the more sophisticated courts are becoming reluctant to issue such wide ranging seisure orders and now normally confine themselves to ordering a search for the purposes of producing a description of what is found. The plaintiff may be authorized to be present during the search, but this is not necessarily the case. To obtain such a seizure order, the plaintiff must satisfy the court that it is necessary and, if actual seizure of articles is to occur, that any damage that might be done to the defendant by the seizure this can be reimbursed if it ultimately transpires that the seizure was wrongful. If so ordered by the court, the seizure may not only be used for obtaining evidence, but also to prevent the defendant selling infringing products found during the seizure. Although a seizure order may be made ex parte, there must be an inter partes hearing within 8 days. If at that hearing it appears that the plaintiff's case is weak, the continued existence of the seizure may be made conditional upon the posting of a very substantial bond by the plaintiff. Furthermore, normal legal proceedings must be instituted within 8 days of a seizure if evidence obtained in the seizure is to be used in those proceedings.[3]

Proceedings for an interlocutory injunction are possible if the plaintiff can convince the court that its rights are likely to be upheld at trial.[4] Such orders can in some cases be obtained in a matter of a few weeks. The plaintiff may be required to post a bond against the possibility that he will not succeed at full trial. However, this is not generally required. The plaintiff should act fairly promptly after learning of an infringement if he is to succeed.

Proceedings leading to a full determination of the issues proceeds more slowly, however. Typically, the court appoints an expert and each party will probably appoint its own expert to cooperate with the court expert. Each court keeps its own register of experts, although there is no requirement that the expert is selected from that list if the court gives its reason as to why it has selected someone else. The function of these experts is to answer questions put to them by the court. These questions are formulated at hearings between the judge and the parties. Under the court's supervision, the role of the expert may be wide ranging from giving in camera advice to the judges to carrying out his own independent technical evaluation of the issues in the case. The costs of the expert are normally changed to the losing party in the case.

It is possible for evidentiary hearings to take place at which witnesses are present. However, these are rare. The defendant may, and frequently will, counterclaim that the patent in question is invalid and thus provide further grist for the expert's mill. Ultimately, the experts produce their report and each side then files briefs discussing the report and setting out their submissions as to the law after which the court reaches its conclusion. Although the Italian Civil Procedure Code makes provision for oral argument, in practice this does not occur all that often.

The decision of the court relies heavily on the opinion of the court expert, who will normally give an opinion on the issue in suit. This can be overturned (but rarely is) by the court if it is unsatisfactory or not well founded. In addition to making a finding on the question of infringement, the court may also make a formal finding of total or partial nullity of the patent in suit. If the first instance decision is appealed to a Court of Appeals, the appellate court will normally appoint its own expert to review the previous opinions.

Damage awards in Italy are based on the amount of actual damage the plaintiff can demonstrate. There is no provision for an increase for willful infringement or the like. There is, however, no statute of limitation period that might restrict the award of back damages. Furthermore, the prevailing party is entitled to an award of costs, although they are normally modest.

Italian proceedings have a reputation for being unpredictable and tend to be fairly long (two to three years or more to first instance judgment). They are, however, comparatively cheap.