ITALY Trends and Developments Contributed by: Giovanni F Casucci, EY Tax & Law
and judges: the fact that in Italy it has been pos- sible (for decades) to institute proceedings on the merits or as a precautionary measure pend- ing the examination of a patent application, ie, after its publication, 18 months from the priority filing date. In many European jurisdictions, it is impossible or at least very rare for a patent case to be insti- tuted before the title is granted, which according to the average timeframe of the EPO takes three to four years. This has to be combined with statistics from the latest EPO annual report, which shows an aver- age “life” of nine and a half years for European patents. It is understandable, therefore, that waiting four years before being able to start litigation in defence of one’s rights means risking almost half of the average economic expectations with a risk of “erosion” of very important market val- ues, which can hardly be repaid in damages. Secondly, the reliability of statistics that place Italy as the slowest country in terms of handling patent litigation should also be challenged. Any statistic must be based on homogeneous and comparable data in order to be credible. Therefore, patent litigation statistics should first be divided between interlocutory and ordinary proceedings. Moreover, any jurisdiction adopting the system of “separation” of validity issues (which in these jurisdictions requires separate adjudication of an average duration of three years) in the evaluation of the infringement per se (which in the fastest
jurisdictions is around 15 months) should be excluded from the comparison. Therefore, speed ratings, thus appropriately pro- portioned, would reveal that: • 90 % of Italian IP litigations are instituted or otherwise handled via an interlocutory pro- ceeding; • approximately half of the cases instituted via interlocutory proceedings are settled as a result of decisions rendered at this preliminary stage; • the average time for patent litigation in the interlocutory phase does not exceed 18 months, while in trade mark and design mat- ters it is concentrated within six months; and • the average time of ordinary litigation (of about 40 months) should be assessed as a whole, considering that in such litigation not only the determination of the violation but also the determination of damages is assessed (which in other jurisdictions requires a separate trial). In the light of this data, one can be reasonably convinced that Italy may be among the top coun- tries in terms of speed in the interlocutory stages and among the average countries in terms of the duration of the entire trial, including the stage envisaged for damages. Therefore, the Italian system is very aware of the economic and time interest of the IP own- ers offering to react as soon as possible to any potential infringer. From this point of view, therefore, the first rea- sonable option for a patent holder should be to take legal action in Italy (at least for evidence- gathering measures, as illustrated below) and then consider how to extend the litigation to
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