ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
a different court. This situation may occur due to the different criteria for court jurisdictions. In fact, while the patent owner has to initiate the proceedings before the forum rei or theforum commissi delicti, the defendant can challenge the validity of the patent not only as a counter- claim in the infringement proceedings but also by starting a revocation action before the court where the patentee has elected their domicile. Anti-suit injunctions have not been observed in Italy and, in any case, they are deemed contrary to the EU legislation and principles on jurisdic- tion. In preliminary proceedings, the patentee is granted the right to obtain injunctive relief, sei- zure of infringing goods and market withdrawals of the same. Injunctive relief and market withdrawals are usu- ally assisted by an astreinte or penalty for each violation of the order. Legal remedies for the patentee in main pro- ceedings include permanent injunctive relief, market recall, destruction, or assignment of the infringing goods (and essential means for the production of the same), all enforced through an astreinte or a penalty in the case of a breach of the related orders in the judgment. The remedy of damages (compensation) is based on loss of profits of the patentee, which are usually calculated starting from the royalties that the infringer would have pay to the patentee for the licence (duplicated or tripled) up to the patentee’s actual loss of profits due to the pres- 6. Remedies 6.1 Remedies for the Patentee
ence of the infringing products in the market. In any case, the patentee can ask for the return of the infringer’s profits, which is awarded either in conjunction with or as an alternative to the loss of profits, but only for the portion exceeding the damages awarded. Judges have discretionary powers to ensure proportionality between remedies, the intensity of the infringement and the interest of third par- ties. 6.2 Rights of Prevailing Defendants Winning parties, including defendants, have the right to recover legal costs and attorneys’ fees, as determined by the judge based on rates out- lined in specific legislation. Although rare, if the patentee is found to have acted with gross negligence or in bad faith before the court (ie, being aware of the invalidity of the patent and/or the non-existence of the infringe- ment), the prevailing defendants are entitled to seek compensation for damages. 6.3 Types of Remedies The Italian system does not provide for different types of remedies according to different techni- cal intellectual property rights. 6.4 Injunctions Pending Appeal An appeal does not automatically result in a stay of the injunction, which must be specifi- cally requested by the infringer. In preliminary proceedings, the appeal judges can be grant- ed a stay when, for supervening reasons, the injunction is likely to cause serious harm. In main proceedings, a stay may be granted if the appeal appears to be manifestly well founded or if the execution of the injunction is likely to cause seri- ous and irreparable harm.
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