ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
The law only requires the grant before the final decision on the merits. Therefore, all the prelimi- nary measures may be adopted without waiting for the final grant (which may take several years). Secondly, there is no need to send a warning letter. Such initiative, moreover, may frustrate the surprising effect of the “ex parte” order and may legitimate a non-infringement declaratory action from the counterpart receiving the letter. Mediation is not a condition for prosecution for patent matters, but, as of July 2023, it is for some matters that may be affected by the law- suit (eg, in the fields of supply or subcontracting contracts). However, a judicial delegated mediation is com- pulsory: when the judge, after assessing the nature of the case in the ordinary proceeding, the state of the investigation and the behaviour of the parties, orders the mediation process to be carried out, the same process is a condition for the proceeding of the court application. 2.6 Legal Representation In Italy, parties involved in intellectual property litigation are always required to be represented by a lawyer. 2.7 Interim Injunctions In Italy, interim injunctions, including ex parte injunctions, are available and commonly used in intellectual property matters. The circumstances for granting the interim injunctions are as follows. Likelihood of Success on the Merits (fumus boni iuris) The party seeking the interim injunction must typically demonstrate a prima facie case, indi-
cating a likelihood of success on the merits of the intellectual property infringement claim. This involves showing that there is a valid intellectual property right, a likelihood of infringement and a basis for legal action. Urgency (periculum in mora) Interim injunctions are granted when there is an urgent need to prevent irreparable harm to the rights holder. The appreciation of the urgency is much more flexible than in other EU jurisdic- tions (several months from the knowledge of the infringement). 2.8 Protection for Potential Opponents In Italy, a potential opponent facing the risk of an interim injunction or other legal actions in intel- lectual property matters cannot file protective briefs or similar. The usual reaction, having received a direct or indirect warning, is to file a non-infringement declaration action, selecting the most appropri- ate IP court, with the aim of preventing ex parte actions from the patent owner. Although Italian law provides that evidence pro- tection measures and/or preliminary injunctions may be subject to the applicant’s posting of a bond or security in order to guarantee compen- sation for any damage suffered by the defend- ant, such practice is not common. However, almost all cases of search orders granted ex parte by local UPC divisions (mainly the Italian one) have always provided for the granting of a bond. 2.9 Special Limitation Provisions Under Italian law, the right to compensation for damages arising from a tort (and thus also for patent infringement) is prescribed as five years
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