ITALY Law and Practice Contributed by: Daniela Ampollini, Luca Pellicciari, Elena Mannini and Andrea Beltrame, Trevisan & Cuonzo
procedural rules are more similar to the Italian ones. 1.17 Patent Amendment A patent in the midst of litigation can be amend - ed either by means of an application filed directly with the Italian Patent and Trademarks Office (ITPTO) or, if the litigation includes a claim of invalidity, directly in court by means of a dec - laration submitted to the judge. There are no time limits to do so. The Italian system does not contemplate the filing of auxiliary requests. No matter whether it is filed before the ITPTO or in court, an application to amend is a dispositive withdrawal of the broader scope of protection defined by the previous claim set. 1.18 Court Arbiter Commercial chambers instituted in the 23 main court districts have exclusive jurisdiction over intellectual property cases, including pharma/ life sciences cases. If the proceedings involve a foreign party, only the following 11 district courts have jurisdiction: Bari, Bolzano, Cagliari, Catania, Genoa, Milan, Naples, Rome, Trento, Turin and Venice. Italian commercial judges are usually selected among senior members of the judiciary system, and despite having a legal, non-technical background, most of them are specifically skilled in intellectual property mat - ters (although their level of experience in the field may vary depending on the court seized). The court having territorial jurisdiction to hear a patent infringement action is: • the court of the domicile of the defendant; or • the court of the place where the alleged infringement took/is taking place (ie, locus commissi delicti).
In case of invalidity/revocation actions, territo - rial jurisdiction is determined by reference to the right holder’s elected domicile. These criteria allow the parties to forum shop to their courts of choice. The main and more experienced com - mercial chambers are those of Milan, Rome and Turin courts.
2. Generic Market Entry 2.1 Infringing Acts
Every act that involves putting the patented invention into effect and earning a profit or com - mercial advantage out of it can qualify as direct patent infringement. Direct infringement typically involves manufacturing, using, offering for sale, marketing, importing and exporting the allegedly infringing goods. Infringement proceedings can also consist of indirect or “contributory” infringement acts. A finding of contributory infringement is subject to two conditions: • the supply of means that are essential to put the patented invention into effect in a country where the invention enjoys patent protection; and • the fact that the contributory infringer is aware, or should be aware using normal dili - gence, that those means are intended to be used for putting the invention into effect. Contributory infringement applies regardless of whether the direct infringement occurs or is intended to occur in Italy or any other country where the invention is protected by patent law. This holds true even if the infringement targets individuals or entities covered by patent exemp - tions, such as the experimental exemption or the Bolar exemption. However, contributory
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