MILAN LOCAL DIVISION Law and Practice Contributed by: Vittorio Cerulli Irelli, Lorenzo Battarino and Daniel Borgogni, Trevisan & Cuonzo
5. Economic Issues and Remedies 5.1 Case Value and Court Fees So far, no specific trend has emerged in this regard before the Milan LD. As far as is pub - licly known, the value of the case proposed by the applicant was challenged in the Oerlikon v Bhagat merit proceedings. The court ultimately confirmed the EUR750,000 value proposed by Oerlikon, dismissing Bhagat’s attempt to reduce the value of the case (and therefore the applica - ble ceiling for recoverable costs). As regards court fees paid by applicants, in Morello Forni v Gastroteam the plaintiff request - ed and obtained a reduction of fees to be paid to 60% of the standard fees under Rule 370.8 RoP, arguing that it falls within the category of Small and Medium-Sized Enterprise (SME). 5.2 UPC Court Fees Compared to National Courts Court fees at the UPC are generally much higher than national fees, where fees for a patent action are typically limited to around EUR1,000. This is arguably one of the reasons why pure national Italian patent litigation has not yet shifted to the UPC (as opposed to other jurisdictions, where UPC costs are comparable to costs for national patent litigation). 5.3 Costs Awards At the time of publication of this guide, there has been one award of costs for EUR77,064.65 fol - lowing an application for a cost decision by Oer - likon Textile GmbH v Bhagat Textile Engineers (ORD_n. 22179/2025). The amount awarded is lower than the figure requested by the applicant. Oerlikon indeed aimed for an award meeting the higher end of the ceiling for recoverable costs set in relation to the case value established by the court, but the Milan LD reasoned that such
so runs from confirmation of the search order, but later changed its approach after the Court of Appeal intervened to harmonise the case law on this specific procedural point (see 4.6 Court of Appeal Procedural Jurisprudence for more details). 4.6 Court of Appeal Procedural Jurisprudence So far, the most relevant procedural point addressed by the Court of Appeal in reforming case law of the Milan LD concerned the deter - mination of the deadline for bringing subsequent merit proceedings following enforcement of an order to preserve evidence. Specifically, in Progress Maschinen v AWM et al (ORD_9710/2024), the Milan LD held that the deadline for the applicant to bring merit proceedings (and to this end request access to the acquired material) had expired because the deadline provided under Rule 198 RoP (31 calendar days or 20 working days, whichever is longer) had effectively started running after expiry of the prior 30-day term for the defend - ant to lodge a request for review of the order to preserve evidence (Rule 197.3 RoP). On appeal (ORD_36778/2024), the Court of Appeal clarified that, absent a request to review the order from the defendant, such term only starts running once the applicant/plaintiff has had access to the material acquired or from the date on which the court has made a final deci - sion not to grant the applicant access to the evidence (in the case at issue, it had not started running, since Progress Maschinen had not yet been granted such access).
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