ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
nary civil court, called Business Courts: in Italian, the specialised sections are often referred to as Sezione Specializzata in materia d’Impresa . Each court has specialised sections dedicated to handling intellectual property cases: they are established in the courts and courts of appeal located in the capital of each region, with the exception of Lombardy, Trentino-Alto Adige and Sicily (where there are two branches) and Valle D’Aosta (where there are no branches, as juris- diction lies in Turin), for a total of 22 courts with jurisdiction in IP matters on Italian territory in the first instance. The choice of which court to refer to is determined on the basis of the place of resi- dence, domicile abode of the defendant (forum rei), possible co-defendants or, alternatively, in the place where the infringing activity took place ( forum commissi delicti ). Note that if one of the litigants is a foreigner, territorial jurisdiction is limited to only 11 special- ised courts. In fact, for disputes in which a com- pany, in whatever form it is incorporated, with its registered office abroad, including those with branch offices with permanent representation in the territory of the state, is a party – even in the case of several defendants – only the Courts of Bari, Bolzano, Cagliari, Catania, Genova, Milan, Naples, Rome, Trento, Turin and Venice have jurisdiction. Appeals from decisions of the specialised sec- tions of the Business Courts of first instance are heard by the courts of appeal ( Corte d’Appello ). The courts of appeal also have specialised sec- tions for intellectual property matters and sit in the in the capital of each region, with the excep- tions indicated above. The third and final instance for intellectual prop- erty matters is typically the Supreme Court of
Cassation ( Corte Suprema di Cassazione ). The sections dealing with intellectual property mat- ters are the Civil Sections ( Sezioni Civili ). 2.4 Specialised Bodies/Organisations for the Resolution of Disputes As mentioned at 1.1 Types of Intellectual Prop- erty Rights , the UPC has a local and a central division in Milan, which is part of the broader EU system. The UPC is a pan-EU court for pat- ent disputes, including issues related to patent infringement and validity. Since its establishment, Milan’s division of the UPC has handled several cases: these decisions highlight Milan’s increasing role in the newly established UPC system. Additionally, the UIBM and the World Intellectual Property Organization’s Centre for Arbitration and Mediation (the “WIPO Centre”) collaborate in order to promote the use of ADR procedures to resolve IP and technology disputes in Italy. Since July 2020, the WIPO Centre has entered into a Memorandum of Understanding with the Milan Chamber of Arbitration (CAM), an institu- tion of the Milan Chamber of Commerce, for the promotion of mediation in international disputes in the fields of IP and technology. As part of this collaboration, the WIPO Centre and CAM jointly handle mediation cases involving at least one non-Italian party, according to the WIPO media- tion rules. 2.5 Prerequisites to Filing a Lawsuit In Italy, there are no strict prerequisites to filing a lawsuit in intellectual property matters, including patent infringement cases. Any IP rights and patents can be enforced during the application period (ie, after the publication occurring after 18 months from the filing date).
286 CHAMBERS.COM
Powered by FlippingBook