ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
5.11 Cost of Litigation The estimated costs of trade secret litigation in Italy can vary considerably depending on the nature of the trade secrets involved and the complexity of the case. Typically, standard litigation in this field may range between EUR70,000 and EUR120,000, including both legal and technical expenses. However, where trade secret disputes involve IT-related issues, costs can significantly increase, ranging from EUR150,000 to EUR350,000, largely due to the cost of IT technical reports. Although not yet widely adopted, litigation financing is available through private insurance policies taken out prior to the alleged unlawful conduct. Trade secrets trials are exclusively decided by a pan - el of three judges in the merit proceedings (after the “pretrial stage” conducted by a judge rapporteur), while the urgent measures are granted by a single judge (subject to a possible appeal to be decided by a panel of three judges). There are no jury trials in trade secret or IP litigation. 6.2 Trial Process IP rights proceedings in Italy are governed by the Ital - ian CPC and, for certain specific issues, by the CPI. A clear distinction exists between preliminary and main proceedings, particularly in terms of timing and their effectiveness in safeguarding trade secrets. Preliminary proceedings allow trade secret holders to obtain a swift decision from the court within six to 12 months on average, including the appeal stage. These proceedings are very flexible (not being bound to procedural timelines) and usually, after the filing of the motion and the defensive brief, include a first hear - ing aimed at verifying the urgency, a technical stage on the validity and the infringement of the patent, and a final discussion focused on both the technical and legal aspects. The related order assessing trade secret misappropriation includes remedies such as a 6. Trial 6.1 Bench or Jury Trial
• ordering the redaction or omission of confidential portions of documents. This approach closely mirrors the “confidentiality clubs” or “confidentiality rings” used in antitrust pro - ceedings. As a general rule, civil proceedings in Italy are confidential in nature, and access to information exchanged during such proceedings is typically lim - ited to the parties, with third-party access excluded. 5.9 Defending Against Allegations of Misappropriation In Italy, the most common and effective defence to allegations of trade secret misappropriation involves challenging the protectability of the trade secret itself. Typical lines of defence include: • failure to adequately identify the trade secret; • absence of reasonable measures to maintain secrecy; • lack of actual secrecy (ie, information already in the public domain); and • lack of economic value of the information. Notably, the alleged infringer is not required to dem - onstrate how their use of information differs from the claimant’s trade secret; instead, they can focus on undermining the claimant’s evidence. Timing is criti - cal: if a descrizione was granted and executed ex par - te, the first defensive measure should be to demand that all collected data be kept strictly confidential and that the claimant be required to provide security. Moreover, the Trade Secrets Directive introduces an additional defensive argument based on the princi - ple of procedural abuse. In accordance with Recital 22, it is possible to challenge actions brought in bad faith – such as applications designed to unfairly delay or obstruct the respondent’s market access, or to intimidate or harass the respondent – as an abuse of process. 5.10 Dispositive Motions Italian jurisdiction does not provide for dispositive motions in the strict sense. However, urgent proceed - ings – often anticipating the outcome of ordinary litiga - tion – frequently encourage the parties to reach a set - tlement, thereby saving significant time and resources.
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