MILAN LOCAL DIVISION Law and Practice Contributed by: Vittorio Cerulli Irelli, Lorenzo Battarino and Daniel Borgogni, Trevisan & Cuonzo
and better manage litigation exposure tied to high-revenue products. 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. 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. 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 panel and the parties during hearings would be beneficial. A mechanism to support this goal, which may be achievable across all LDs, could include the panel providing parties with a list of key questions (even refraining from setting out a preliminary 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 particular from challenging the validity of a patent enforced and may be perceived as a limita - tion 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.
95
CHAMBERS.COM
Powered by FlippingBook