ITALY Law and Practice Contributed by: Daniela Ampollini, Luca Pellicciari, Elena Mannini and Andrea Beltrame, Trevisan & Cuonzo
of patent protection or the parties’ respective arguments. Italian courts are normally hesitant/ resistant to staying or postponing the case on account of pending EPO oppositions. 1.5 Timing for Main Proceedings on Infringement/Validity Patent infringement and invalidity actions are instituted under and governed by the Italian Civil Procedural Code, with the addition of some special procedural provisions contained in the IP Code. The Italian Civil Procedural Code under - went a major reform with the entry into force of Legislative Decree No 149 of 10 October 2022 (the so-called Cartabia Reform), which led to a substantial revision of the structure of the main proceedings. Main proceedings are instituted via the service of a writ of summons on the defendant. The writ must carry a fairly detailed summary of the plaintiff’s arguments and a precise indication of the plaintiff’s requests to the court, includ - ing an indication of the specific remedies the plaintiff intends to pursue. The plaintiff must subsequently lodge the writ of summons with the court within ten days of applying for service, along with any exhibits/documents mentioned in support. The case is then assigned to an instructing judge. In the writ of summons, the plaintiff must also indicate a first hearing date, allowing a “space” between the service of the writ and the date of the hearing of either 120 days (if service has to take place in Italy) or 150 days (if service has to take place abroad). If the defendant wishes to file a counterclaim, call third parties or raise any procedural or substantive defence that the court could not raise ex officio, they must file a statement of defence at least 70 days before the above-mentioned hearing. The judge carries out
preliminary checks and confirms (or postpones up to a maximum of 45 days) the date of the first hearing with a decree that the judge must issue within 15 days of filing the defendant’s statement of defence. Proceedings are subsequently fragmented into three sets of briefing notes exchanged between the parties, each due in, respectively, 40, 20 and 10 days prior to the first hearing. These rounds of briefing notes are intended for the submis - sion and presentation of evidence/evidentiary requests, such as witness testimonies. The sec - ond of these rounds (due 20 days before the first hearing) also marks the cut-off deadline to pre - sent purely factual evidence, ie, non-technical and unrelated to technical aspects of validity and infringement (see below). Further to the Cartabia Reform, the first hear - ing is now more substantive, whereby the judge not only sets out the calendar of the case but also gives specific directions as to how the judge intends to manage the case from the perspective of evidence. Importantly, having had the ben - efit of seeing the evidence before the judge and the parties’ evidentiary requests before the first hearing, the judge is now in a position to either recommend or direct the parties to a settlement at the first hearing. Unless the parties initiate or reach settlement discussions, the first hearing typically results in the judge appointing a CTA. The CTA’s role is to provide a non-binding opinion on the technical aspects of both the validity and infringement of the patents in question. The panel will then use this opinion as guidance to adjudicate the case. The procedural aspects are similar to those described for PI proceedings; however, the timeline for obtaining a CTA opinion is generally longer than in urgent preliminary proceedings.
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