ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
3.6 Role of Experts In the case of issues concerning technical eval- uations, in order to assess whether or not an infringement has taken place, experts are often appointed. In particular, the judge appoints the court expert in charge of providing a writ- ten report with the technical answers to the issues asked by the judge. During the court expert analysis, the parties are also allowed to appoint their own technical experts in order to highlight the different arguments of the parties and provide any relevant additional documents and data/information. Nonetheless, the judge is not obliged to agree with the conclusions made by the court expert and may reach a (duly moti- vated) different conclusion. 3.7 Procedure for Construing the Terms of the Patent’s Claim In Italy, there is no separate procedure for con- struing the terms of the patent’s claims before the courts. The interpretation of the patent’s claims is the focus of the civil litigation with the support of the court-appointed expert. 3.8 Procedure for Third-Party Opinions In Italian procedure, there is no system by which the court can seek or receive third-party opin- ions (amicus brief). Nevertheless, the intervention of a third party interested in supporting one of the parties is permitted. The Court of Milan allowed this initiative in two recent cases, allowing the evidence of reason- able interest of the intervening party (in both cases, the intervener was an association aiming to protect IP rights, INDICAM, supporting the IP owner).
are different ways to evaluate the “equivalence” (the most common is the “triple test approach”; others are the “invention as a whole approach” and the “element by element approach”). The Italian jurisprudence is open to consider the influence of other jurisdictions (namely that of the UK) but there is serious prudence in avoiding the “extreme interpretation” approach, like in the Aga/Occlutech decisions in Germany before the correcting intervention of the German Supreme Court. 3.5 Defences Against Infringement As a general rule, assuming the validity of a pat- ent, the following are considered to be non-illicit conducts: • implementing a patent for private and non- commercial uses or for experimental pur- poses; • certain exceptions concerning pharmaceu- tical products (eg, Bolar clause or galenic exception); and • prior use. Compulsory or FRAND licences have limited application (and usually with regard to standard essential patents). The application of the “balance of interest” approach, naturally belonging to the legal education of the Italian judges (dating back to the “Roman process” of two millennia ago) allows the judge to decide whether to grant an injunction or to apply alternative measures (as described in the Article 12 of the EU Enforce- ment Directive). The famous Samsung v Apple case of 2011 before the Court of Milan follows that approach exactly.
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