MILAN LOCAL DIVISION Law and Practice Contributed by: Vittorio Cerulli Irelli, Lorenzo Battarino and Daniel Borgogni, Trevisan & Cuonzo
higher end award of costs should not be the default cost award and should instead be justi - fied by the complexity of the issues involved, the number of patents examined, the parties involved or the use of multiple languages, which was not the case here given the circumstances at hand. 5.4 Damages No awards of damages have yet been issued. A provisional award of damages for EUR 15,000 has been issued in the above-mentioned final decision of the Oerlikon v Bhaghat case. 6. The Future of the UPC 6.1 Advantages and Disadvantages of the UPC Seizing the Milan LD may offer several key advantages to patentees. First, the current docket remains relatively clear, with a low num - ber of pending cases, ensuring greater efficiency and shorter time lines, whereas the procedural framework and available remedies are uniform across all UPC divisions, guaranteeing legal cer - tainty. Moreover, the judges appointed are highly experienced in patent litigation, benefiting from both their judicial expertise in Italian IP courts and their frequent designation in other UPC local divisions, in the framework of the attempt by the UPC to reinforce consistency and quality of deci - sions. As mentioned, they are also accustomed to interacting with TQJs in light of their previous national practice, resulting in significant involve - ment of TQJs in the decision-making process of the Milan LD. Last but not least, as mentioned, the Milan LD has issued more orders for preservation of evi - dence as compared to all other LDs, contributing significantly to building the case law of the UPC
in this respect. Hence, in cases where evidence can only be obtained by having access to the premises of the defendant or where obtaining an order for preservation of evidence is strategically or tactically advisable (eg, to prove infringement of dependent claims which may better resist invalidity challenges), patentees should consider seizing the Milan LD if possible. They will benefit from the LQJs’ significant experience in handling this kind of measure, and also from the experi - ence of the supporting staff of the sub-Registry in handling the formalities and practicalities of the execution phase, and of experts appointed by the court under Rule 196.4 RoP who are typically selected from skilled patent attorneys with experience in carrying out similar measures under Italian national law. 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
94
CHAMBERS.COM
Powered by FlippingBook