ITALY Law and Practice Contributed by: Daniela Ampollini, Luca Pellicciari, Elena Mannini and Andrea Beltrame, Trevisan & Cuonzo
PI hearing, the instructing judge were to agree that urgency and procedural requirements are all met/in place, the judge will normally appoint a CTA and charge said CTA with the task of provid - ing a reasoned, non-binding opinion on whether the patent is valid and infringed. Appointment of a CTA normally happens at a formal case confer - ence one to two weeks after the first PI hearing. Upon being formally appointed, the CTA will also receive indications as regards the timeline for delivery of the CTA opinion. The CTA will call for the parties to submit detailed, comprehensive technical submissions presenting their argu - ments (no less than two rounds) before issuing a preliminary opinion, which the parties will be asked to comment upon in writing. The CTA will then issue a final opinion that takes those com - ments into account and, subsequently, upload it onto the court e-registry. Save for the delivery of the CTA final opinion (which is court-mandat - ed), the calendar of these activities is defined by the CTA in agreement with the parties and on a case-by-case basis. A final hearing for oral pleadings will take place within one to two weeks after delivery of the CTA opinion. The PI is adjudicated with an out-of- court order that the instructing judge issues after the final hearing (ie, no decision is announced at the hearing). The order that either grants or denies the PI can be appealed before a panel of three different judges from the same IP chamber within 15 days. The appeal will normally consist of a single hearing, preceded by the filing of a thorough, detailed defensive brief by the party bringing the appeal. PI appeals normally last for two to three months. Further, and importantly, Italian PIs are “stable”, ie, there is generally no need to file subsequent main proceedings to stabilise the PI if the latter
has been requested or granted without ancil - lary measures (such as saisie-type measures or seizures). The court might request that the peti - tioner post a bond as a condition for granting the PI, although this provision is rarely applied. Italian national courts do not allow protective letters. 1.4 Structure of Main Proceedings on Infringement/Validity Infringement and validity proceedings are not bifurcated, resulting in infringement being coun - terclaimed in the course of pending invalidity proceedings. Consequently, invalidity can be challenged/counterclaimed in pending infringe - ment proceedings. The above does not prevent parties from filing two different proceedings, one claiming invalidity and one claiming infringement of the same pat - ent. A landmark judgment issued by the Italian Supreme Court in 2016 stated that infringement proceedings have to be stayed until a decision on the parallel, separate, validity proceedings is issued, thereby opening the door to bifurca - tion strategies, especially by defendants of an infringement action. Invalidity and infringement proceedings can be filed while opposition proceedings are pending, and there is no provision in Italian patent law requiring that said proceedings be stayed due to the existence of opposition proceedings pend - ing before a patent office. Italian courts may decide that an infringement or invalidity case needs to be either stayed or postponed pend - ing the outcome of parallel opposition proceed - ings. However, this occurs on a case-by-case basis and only when a party can demonstrate that a decision in the opposition proceedings is imminent and will significantly affect the scope
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