MILAN CENTRAL DIVISION Law and Practice Contributed by: Luca Pellicciari, Lorenzo Battarino and Daniel Borgogni, Trevisan & Cuonzo
ent litigation, benefiting from their judicial expertise in both Italian and foreign IP courts. As mentioned, in particular, the Presiding Judge Mr Postiglione is also accustomed to interacting with TQJs in light of his previous national practice, predictably resulting in significant involvement of TQJs in the decision- making process of the Milan CD. 6.2 Future Trends Over the next two years, a notable trend in patent litigation before the UPC is expected to be the gradual reduction of the current concentration of cases in German local divisions, with a more balanced distribution of litigation across different UPC divisions. Such redistribution is anticipated to be facilitated by the emerging harmonisation of case law by the Court of Appeal, which will promote greater consistency and legal certainty across the participating jurisdictions, encourag - ing broader venue selection by litigants. 6.3 The Future of National Patent Litigation National patent litigation in Italy is likely to retain a significant role, primarily due to its substantially lower costs compared to proceedings before the Unified Patent Court. It will remain particularly relevant for disputes of local importance. Moreo - ver, in certain sectors – such as pharmaceuticals involving secondary inventions – national litiga - tion may continue to be preferable for patentees, allowing them to avoid central revocation risks and better manage litigation exposure tied to high-revenue products. Additionally, in recent years since the inception of the UPC, national courts have seen significant activity in relation to actions aimed at securing the lock-out effect on opted-out patents under Article 83.4 UPCA – a trend that may further intensify in the future. Italian assertions may also continue to play a role in situations where
the patentee wishes to anticipate enforcement, without waiting for grant of the patent by the EPO. This is because Italy is one of the few juris - dictions that allows courts to issue exclusionary remedies on the basis of patent applications. 6.4 Improvements to the UPC One of the immediate points to be addressed to enhance the efficiency and user experience of the system is improving the handling of online case files. Significant expectations are placed in this respect on the new case management sys - tem anticipated to be operational later in 2025. Additionally, a greater interaction between the pan - el and the parties during hearings would be ben - eficial. A mechanism to support this goal, which may be achievable across all LDs, could include the panel providing parties with a list of key ques - tions (even refraining from setting out a prelimi - nary view/opinion) ahead of the hearing. Inspired by practices in international arbitration, this would facilitate focused discussion without any risk of perceived anticipation of judgment by the panel. Other, relatively more ambitious potential improvements to be considered include • allowing a defendant to rely on invalidity argu - ments as a defence to infringement without requiring the defendant to file a counterclaim for revocation – doing so currently neces - sitates the payment of substantial court fees, which could discourage SMEs in particu - lar from challenging the validity of a patent enforced and may be perceived as a limitation to the right of defence of the defendant; and • expanding the scope of Article 49 of the UPCA to account for the possibility to des - ignate a language of one of the contracting member states other than the language of the patent as the language of the proceedings.
78
CHAMBERS.COM
Powered by FlippingBook