ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
5.2 Decision-Makers The cases are determined by legal judges with- out technical competence who base their deci- sions on the findings concerning patent validity and/or infringement of the CTU. The preliminary proceedings are conducted and decided by a single IP-specialised judge at the first instance, while the appeal stage is held by a panel of three other judges from the same IP court section. The main proceedings are conducted by a single IP-specialised judge and decided by a panel of three IP-specialised judges, both at the first and appeal stages. The parties do not have any influence on the selection of the judge, who is selected by the presiding judge of the specific court involved. Nevertheless, from a strategic point of view, the patent owner has the opportunity to choose, according to the criteria of the forum rei, any possible co-defendant and the forum commissi delicti , from among the alternative courts. 5.3 Settling the Case According to the CPC, the first hearing of a main proceeding is aimed at finding a possible settle- ment of the case, requiring the presence of the parties. During the proceedings, hearings for attempting a court mediation can be scheduled at any stage on the joint request of the parties or on the initia- tive of the judge. 5.4 Other Court Proceedings According to the latest interpretation of the Italian Supreme Court, a main infringement proceed- ing can be temporarily stayed when the defend- ant has initiated a parallel revocation action in
The related order assessing patent infringement includes remedies such as preliminary injunction and/or seizure of the infringing goods, astreinte and market recalls. For the main proceedings, the standard timeline, involving revocation and infringement issues, is typically two to two and a half years. The recent reform (2023) of the CPC introduced a series of simplifications in terms of timing and hearings to be held, which in patent matters usually involves four trial hearings: • a first hearing; • the appointment of the court-appointed tech- nical expert (c • onsulente tecnico d’ufficio, CTU); • a discussion of the results of the CTU’s find- ings; and • a final hearing. Fact witnesses are not very common in patent matters because they are limited to confirming the factual circumstances unrelated to validity and infringement. Expert witnesses are not spe- cifically provided for, but parties’ experts take part actively during the CTU’s stage. Only the judge can examine the witnesses and the CTU, eventually upon specific requests from the par- ties’ counsel. The merit judgment assessing the infringement usually includes remedies such as permanent injunctions, market recalls, astreinte, assign- ment, or, alternatively, destruction of the infring- ing goods. For the assessment of damage awards or return of profits, the courts usually open a further stage dedicated to accounting evaluations by a CTU.
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