ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
Scope of Protection and Equivalents The claims define the scope of protection; the descrip- tion and drawings are used to interpret the claims. Infringement may be literal or by equivalence. Italian courts apply a doctrine of equivalents, protecting vari- ants that implement the same inventive idea through substantially equivalent means, provided that the vari- ant would not deprive the claims of their proper limit- ing function. Defences Typical defences include invalidity, non-infringement, prior use, exhaustion, private and non-commercial use, experimental use, the Bolar exemption and other statutory limitations. Compulsory licensing may be rel- evant in limited circumstances. In disputes concern- ing standard essential patents, FRAND principles may also be central, including the parties’ conduct during licensing negotiations. 1.6 Patent Enforcement and Remedies Jurisdiction and Timelines Patent disputes in Italy are handled by the special- ised business courts ( Sezioni Specializzate in Materia di Impresa ), which have jurisdiction over patent mat- ters. For European patents within the UPC system, the UPC may also have jurisdiction, including through the Milan Local Division and, for certain actions, the Milan section of the Central Division. Preliminary proceedings usually last around six to nine months, including any court-appointed expert phase (CTU), although urgent ex parte measures may be obtained more quickly in appropriate cases. Pro- ceedings on the merits are longer and generally take around two to three years at first instance. Parallel Proceedings Infringement and validity issues may run in parallel but are closely linked. Under Article 117 of the IP Code, the grant of a patent does not prevent actions concerning validity or ownership. Invalidity may be raised as a counterclaim in infringement proceedings or through separate nullity proceedings. Where the same court hears both issues, they are usu- ally dealt with together. If validity proceedings con- cerning the same patent are pending before another
court, the infringement action may be stayed, par- ticularly where validity is a preliminary issue. Italian courts may also take EPO opposition or limitation pro- ceedings into account, although national infringement
proceedings remain autonomous. Interim Measures and Remedies
Interim measures include preliminary injunctions, seizure, withdrawal from the market and description orders ( descrizione ) to collect evidence. Final rem- edies include: • permanent injunctions; • destruction or assignment of infringing goods and means of production; • publication of the judgment; • damages; • reasonable royalties; and • recovery of the infringer’s profits. Costs The successful party may recover court costs and attorneys’ fees, but recovery is assessed by the court and is not always equal to the full amount actually incurred. 2. Trade Marks 2.1 Legal Framework and Protectable Signs Trade mark protection in Italy is governed by Articles 2569–2574 of the Civil Code and by the IP Code, together with its implementing regulation. Under Article 7 of the IP Code, a trade mark may con- sist of any sign capable of distinguishing the goods or services of one undertaking from those of others and of being represented in the register in a clear and precise manner. Protectable signs include: • words; • personal names; • logos; • figurative elements; • letters; • numerals;
• shapes of goods or packaging; • colours and colour combinations;
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