ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation
A revocation action started by an alleged infring- er before the patent domicile without a coun- terclaim for infringement will necessarily be dis- cussed and decided simply on the validity point of view, while a later infringement action may be pending between the same parties before anoth- er court where the alleged infringer did not file a nullity counterclaim. Due to the presence of 22 or 11 competent courts in Italy, the scenario described above may be justified by specific strategic decisions of the party’s lawyers. 5. Trial and Settlement 5.1 Special Procedural Provisions for Intellectual Property Rights Intellectual property rights proceedings in Italy are governed by the Italian CPC and, for certain specific issues, by the CPI. A due distinction must be made between pre- liminary and main proceedings, relevant in terms of timing and effectiveness for patent protection. Preliminary proceedings, which are commonly used for patent matters, allow the patent owner to obtain a swift decision from the court within six to nine months on average, including the appeal stage. These proceedings are very flex- ible (being not bound to a procedural timeline) and usually, after the filing of the motion and the defensive brief, include: • a first hearing aimed at verifying the urgency; • a technical stage on the validity and the infringement of the patent; and • a final discussion focused both on the techni- cal and legal aspects.
The Italian procedure does not require any spe- cial remedy and/or reason for revocation/cancel- lation of an IP right. Any third party (including a public prosecutor) is entitled to start a cancellation/revocation action against a patent. 4.2 Partial Revocation/Cancellation According to Italian law and procedure, partial revocation/cancellation is possible. A frequent hypothesis worth mentioning is the case of patent limitation requested by the owner dur- ing the litigation and/or the “merging” of a (null) independent claim with one or more dependent claims. 4.3 Amendments in Revocation/ Cancellation Proceedings The patent owner can potentially limit the scope of protection of the patent at any point during the trial. Nonetheless, fair behaviour would imply not doing so at the very end of the trial (ie, just before the decision is issued and the joint consultation/ evidentiary phase has already closed – in fact, re-opening those phases may result in an unfair time and cost expense for the other party and the court) and not exceeding the number of limi- tation requests. 4.4 Revocation/Cancellation and Infringement According to Italian law and procedure, revo- cation or cancellation and infringement can be heard together in the same trial. Of course, this largely depends on the situation.
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