ITALY Law and Practice Contributed by: Daniela Ampollini, Luca Pellicciari, Elena Mannini and Andrea Beltrame, Trevisan & Cuonzo
ment of a bond, the amount of which may vary depending on the value of the case. 5.3 Discretion to Award Injunctive Relief (Final or Preliminary) Although Italian law does not specifically con - template the possibility of limiting/eliminat - ing the scope of injunctive reliefs, Italian case law is quite responsive in applying a balance of convenience between the rights of the pat - entee and the interests of the parties affected by the injunction, including the interest of third parties such as healthcare providers or patients. These concerns are normally dealt with by the court, allowing phase-out periods, ie, a given timeframe during which the enjoined party can continue selling the infringing product or device, however, in such a way as to exit the market gradually. Phase-out sales, of which the injunc - ted party must notify the patentee, are normally considered when establishing damages/return of profits. Cases where injunctive relief was denied as a whole on account of proportionality/ public interest concerns are unheard of. 5.4 Damages Damages are calculated mainly in the form of the patentee’s lost profits, namely the profits that the patentee would have earned on the infringer’s sales had the infringement not occurred. To seek lost profits, the patentee must provide evidence of its cost structure. The “lost profit” is normally calculated based on the profit margin obtained by deducting variable costs from the revenues earned on the infringing sales, also referred to as the “contribution margin”. Whatever the pat - entee’s contribution margin, the patentee’s lost profits are never lower than the reasonable roy - alty the infringer would have had to pay had it taken a licence on the patent. The reasonable royalty awarded in patent infringement proceed - ings is normally “punitive”, ie, it is increased as
opposed to market standard royalty rates to take a deterrent effect on board. As an alternative to damages or, in any event, to the extent that they exceed lost profits, the patentee can always request the court to order the infringer to return all the profits it scored on the infringing sales/activities. The determination of the patentee’s lost profits and/or reasonable royalty and the infringer’s profits is normally assigned to a Court Accounting Expert in the framework of damage proceedings that are often separate/taken up after the issue of a first instance judgment on the merits of the case. The Italian system does not contemplate the award of exemplary/punitive damages. 5.5 Legal Costs The successful party generally has a right to obtain reimbursement of the legal costs incurred in the course of the proceedings, namely: • court fees; • party expert fees; and • part of the attorney fees. These legal costs are assessed directly by the judge and reported in the order/judgment. Immediately after the publication of the decision, the party can forward the losing party a corre - sponding request for payment. With reference to attorney fees, Italian courts have a history of awarding them based on rates set forth by the Ministry of Justice. Recent legislative amend - ments have increased the discretionary power of Italian judges in awarding attorney’s fees, leading to a marked improvement of the legal cost awards, although these are still a fraction of the costs that a party is likely to bear for its attorneys.
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