Withers LLP

Intellectual property, technology and privacy

Partner

Jacopo leads the Italian intellectual property, technology and privacy team in our Milan and Padua offices.

Jacopo’s expertise relates to intellectual property, commercial contracts, information technology, privacy and data protection.

He assists companies in many industries including leading companies in the fashion & luxury, insurance, financial, automotive, food and beverage,electronics and software, entertainment and multimedia, life science and pharma industries.

On the intellectual property side, he advises on )ling, prosecutions, exploitation and enforcement of the main types of IP rights, in particular on worldwide brand protection, managing civil and criminal actions, custom monitoring, parallel imports issues and coordinating counsels in several countries (Asia, US, and EU countries).

He advises and negotiates on a wide range of commercial contracts such as IP license over trademark, copyright, patent and design, coexistence agreements, sale of IP rights, sponsorship and other agreements for the exploitation of image rights, research and developing agreement, agency,distribution and franchising agreements.

He regularly assists the corporate team in the context of a variety of transactions, preparing due diligence reports, negotiating related SPA clauses and ancillary documents such as transitional IP license agreements, transitional IT services agreements and remediation plans on privacy compliance.He also assists clients on labelling compliance, advertising, terms and conditions, prize promotions and product placement. He represents clients in proceedings with the Italian Advertising Authority and the Italian Competition Authority in cases of unfair practice or misleading and comparativeadvertising.

In the field of IT law, Jacopo assists clients with the development of IT platforms, negotiating the relevant agreements such as software license, software development and maintenance agreement. He advises on IT migration projects to allow interoperability of the IT systems and data processing further to acquisition of companies or business units. He deals with IT & data protection issues within outsourcing agreements and commercial and technology joint ventures. He also assists on the setting up of e-commerce projects, drafting legal notices and disclaimers.

On privacy and data protection matters, he assists companies in setting up GDPR compliance programs, gap analysis and remediation plans, analysis of data flows, draft of records of processing, risk assessment also through technical partners, data governance and management (e.g. data processors,DPO), privacy notices and policies (e.g. employee’s use of IT means, data retention), DPIA, Data Breach, transfer of data abroad (e.g. setting up global CRM programs, binding corporate rules) and training. He also advises on complex data processing with specific risks (e.g. IoT, pro)ling, CCTV,biometrics, geo localization). He deals with data protection authorities and assisting in authority’s inspections, internal investigations and court proceedings (e.g. right to be forgotten).

Italian and English

Milan BarMember of Federprivacy and Asso DPO (data protection of�cer association), IAPP

University of Florence, law degree, 2002; master in business law, 2003; master in intellectual property, 2006University of Parma, PhD in commercial law, intellectual property and competition, 2012

Jacopo is passionate about photography and enjoys outdoor activities such as skiing and sailing.