Patent litigation is subject to the jurisdiction of specialized business sections established in first and second instance courts of major Italian cities, namely Bari, Bologna, Catania, Florence, Genoa, Milan, Naples, Palermo, Rome, Turin, Trieste, and Venice. Generally, actions related to patents (and other IP rights) are filed in the jurisdiction where the defendant resides or is domiciled (forum rei). If the defendant lacks residence, domicile or abode in Italy, actions may proceed in the jurisdiction of the plaintiff’s residence, domicile or abode (forum actoris). If neither party is domiciled in Italy, the Court of Rome has jurisdiction. For invalidity actions, the competent forum is based on the patentee’s chosen domicile upon registration, serving as an exclusive domicile for jurisdiction and document service.

In addition, infringement and non-infringement actions can be initiated at the court where the infringement occurred (forum commissi delicti). This system allows parties to choose between general forums or the forum commissi delicti for infringement cases. If the chosen court lacks a specialized business section, the case is deferred to a regional court with such a section. Specialized judges bring significant expertise in patent and IP litigation, though they typically lack technical backgrounds and rely on court-appointed experts.

Patent litigation can proceed as either interim or main proceedings, depending on the claim.

In interim proceedings, claimants can seek urgent relief measures, such as preliminary injunctions, seizure, and description orders, to secure immediate protection and evidence of infringement or non-infringement which can be then used in following main proceedings to get a declaration of liability and compensation for damages. Interim proceedings require fumus boni juris (likelihood of the right’s existence) and periculum in mora (risk of prejudice implied in waiting a decision on the merits). Interim proceedings apply to infringement or non-infringement claims but not to validity or revocation actions.

Certain interim measures, like preliminary injunctions, do not require follow-up confirmation in main proceedings, while others, such as seizure or description, require main proceedings within the timeframe set by the judge or, if unspecified, within 20 working days or 31 calendar days, whichever is longer. Without main proceedings, the granted measures (seizure and description) become ineffective.

Main proceedings cover the full scope of the case, allowing judges to issue judgments on validity, revocation, infringement, or non-infringement and address compensation for damages and other remedies like a final injunction. Typically, infringement and invalidity proceedings are bifurcated, though infringement cases often see a counterclaim for invalidity. If separate invalidity proceedings begin, the infringement trial is usually stayed pending the validity decision, as the assessment on validity precedes both logically and legally the assessment on possible infringement (Italian Supreme Court No. 15339/2016).

Rulings on liability and damages are typically issued together, but courts may deliver a partial ruling on liability, with the trial proceeding to quantify damages. A first-instance decision in interim patent litigation proceedings generally takes about a year (possibly including a witness expertise), while a decision on the merits can take around three years.

Both interim and final decisions can be appealed under general Italian civil procedure rules. Interim decisions are appealable to the first instance Court in a collegial seat within 15 days of issuance. Final decisions can be appealed to the Court of Appeal within 30 days of service by either party or, if not served, within six months of publication (save for a suspension of the deadline from the 1^st to the 31^st of August).

No permission is required for appeal, but appellants must have an “interest”, meaning they cannot appeal a case they have completely won. Furthermore, Italian law provides mechanisms to streamline appeals, whereby judges of the Court of Appeal can dismiss an appeal deemed inadmissible or manifestly unfounded.

The typical appeal timeframe in interim proceedings is about two months, whereas main proceedings appeals take approximately three years. First-instance judgments are provisionally enforceable. The appellant may request the judge to suspend the provisional enforceability or execution of the appealed judgment only for serious reasons.

Under Article 66.2 of the Italian Industrial Property Code, the exclusive rights of a patent owner include:

• For a product patent: the right to prevent third parties from making, using, marketing, selling, or importing the product for such purposes.
• For a process patent: the right to prevent third parties from applying the process and from using, marketing, selling, or importing the product obtained directly from the process.

These actions constitute direct patent infringement if they exploit all the essential and typical elements of the patented invention, excluding secondary or ancillary elements.

The Italian Industrial Property Code addresses contributory infringement in Article 66, paragraphs 2 bis-2 quater. Contributory infringement occurs when the conduct, while not being a direct infringement nor a preparation to it, is instrumental to enabling the infringing activity of others. This the case when a party supplies or offers to supply third parties with essential elements of a patented invention, knowing the means are suited for implementing the invention.

Essential elements include:

1. A direct infringement.
2. An act contributory to the infringement by a different person.
3. Awareness by the contributor of facilitating infringement.

Article 66.2 ter clarifies that the supply to third parties of means relating to an indispensable element of the invention and necessary for its implementation does not qualify as contributory infringement if such means are common commercial items, unless the contributory infringer knowingly induces the recipient to perform acts of direct infringement.

Under Article 52 of the Italian Industrial Property Code, the scope of a patent is strictly defined by the claims. Independent claims must include all essential features of the invention, while dependent claims cover specific embodiments. The description and drawings in the patent document aid in interpreting claims, as they provide context on how the invention is to be executed and help clarify claim content.

In Italy, there is no file-wrapper estoppel; statements made by the patent owner during prosecution do not generally affect the scope of the patent. However, some case law treats these statements as presumptive evidence in restricting the patent’s scope.

Italian law also recognizes infringement by equivalents, whereby a product or process can infringe a patent if it incorporates elements functionally equivalent to those claimed. Italian courts have recently adopted the “triple-test” approach to determine equivalence, which requires that the product or process in question performs the same function, in the same way, and achieves the same result as the patented invention.

Key defenses against patent infringement claims include:

1. Possible invalidity of the patent: Defendants often argue that the enforced patent lacks novelty, inventive step, or other validity requirements.
2. Non-infringement: The defense asserts that the requirements for direct, contributory, by equivalent or evolutive infringement are not met in the case at hand.
3. Legal exclusions: Italian law provides specific exceptions to infringement under Article 68 of the Industrial Property Code, such as:

• Acts performed privately and for non-commercial purposes.
• Acts performed on an experimental basis relating to the subject matter of the patented invention, or to the use of biological material for cultivation purposes, or to the discovery and development of other plant varieties.
• Studies and experiments aimed at obtaining a marketing authorization for a medicine.
• Preparation of medicines in pharmacies on a per-unit basis based on prescriptions.
• Actions on software allowed under copyright law.
• Use of a dependent patent (i.e. a patent for invention, the implementation of which involves the use of inventions protected by earlier patents still in force, with the consent of the owners of those patents).
• Prior secret use (any person who, during the 12-month period prior to the filing date of the patent application or priority date, has made use in his business of the invention may continue to use it within the limits of the prior use).

Under Article 76 of the Italian Industrial Property Code, a patent is invalid if:

• The invention is not patentable as:
• • it has a subject matter which cannot constitute patentable invention (e.g., discoveries, scientific theories, mathematical methods, etc.); and/or
  • it lacks patentability requirements (novelty, inventive step, industrial application, lawfulness).
• The invention is not described in a sufficiently clear and complete manner to enable an experienced person to implement it.
• The subject matter of the patent extends beyond the content of the initial application or the patent protection has been extended.
• The patentee was not entitled to obtain the patent.

The Italian case law considers the invalidity grounds above exhaustive.

Under Article 46 of the Italian Industrial Property Code, prior art includes everything made publicly available in Italy or abroad before the patent application date. This can include written or oral descriptions, uses, or any means of disclosure.

Prior art is evaluated differently for assessing novelty and inventive step:

• Novelty: Prior art is assessed on an absolute basis, meaning it includes all publicly known information across fields. A single prior art reference must entirely coincide with the patented invention to negate novelty, while consideration of multiple prior art documents is not allowed. Prior art relevant for the assessment of novelty includes:

• common general knowledge (all that is generally known to an expert);
• enhanced knowledge (which is obtained though research);
• hidden knowledge (which is theoretically possible – but unlikely – to obtain); and
• prior applications (which includes non-published prior Italian, EU – designating Italy – and international – designating and effective in Italy – patent applications).

• Inventive step: the assessment of inventive step (so called inherent novelty) aims at understanding whether the solution presented to the problem in the patent application is obvious or not to the person skilled in the art. Differences with novelty assessment are the following: a) prior art sub iii) and iv) are not considered; b) different and unrelated prior documents can be combined with a mosaic approach to exclude inventive step; and c) the person skilled in the art is an expert of the field(s) to which the invention belongs, while for novelty reference is made to a cross-fields expert.

In order to assess inventive step, Italian courts have recently started to adopt the EPO method called “problem-solution approach”, which consists of (i) determining the “closest prior art”, (ii) establishing the “objective technical problem” to be solved, and (iii) then inferring whether or not, starting from the closest prior art and the objective technical problem, it would have been obvious for the expert of the field to land on the claimed invention. According to this approach, the closest state of the art for assessing inventive step should be represented by a document, which, with regard to the claimed invention and from the point of view of a skilled person at the priority date applicable, pertains to the same or to a closely related technical field, discloses subject-matter conceived for the same purpose, has most technical features in common, i.e. requires the minimum of structural modifications, and relates to the same or a similar technical problem (Board of Appeal EPO, 14 October 2004, T 650/01).

Under Article 79 of the Italian Industrial Property Code, a patent owner may seek to limit the patent. This can be done either through the Italian Patent and Trademark Office, submitting a modified description, claims, and drawings, or directly in court during an invalidity trial by proposing a reformulation of claims. These amendments must not extend the protection originally conferred by the granted patent.

No opposition mechanism is available to third parties against limitations. Limitation requests are examined by the Office, which usually focuses on avoiding that limitations extend the scope of the claims or merely consist in formal amendments.

However, when amendments are made in court, the opposing party may still challenge the validity of the patent as amended.

Amendments are effective from the date they are requested and do not retroactively affect the scope of the patent.

Under Article 60 of the Italian Industrial Property Code, the term of a patent for invention is 20 years from the filing date, while utility model patents last 10 years. Extensions are not available, except for pharmaceutical patents, which can be extended via a supplementary protection certificate (SPC). The SPC provides additional protection for the time between the patent application filing and the date the product received market authorization, with a maximum extension of 5 years.

In patent litigation proceedings, technical matters are typically assessed through expert opinions. Court-appointed experts provide an impartial evaluation of the patent’s validity or infringement. Parties may nominate their own technical consultants to assist them during this process.

As the expert opinion is not a means of evidence available to the parties, the judge retains a discretionary power of appointment, independently from parties’ request. However, a judge, upon receiving a party’s request explaining why the expert opinion is material for the decision on the matter, cannot reject the request without justification.

Experts generally submit a written report after considering written input from the parties’ experts. Given that judges usually lack technical backgrounds, they significantly rely on the court-appointed expert’s findings. Witness testimony and documentary evidence are also admissible, but expert opinion remains central due to the technical complexity of patent cases.

Yes, Italian law allows for urgent measures for preservation of evidence (e.g., description order, seizure, information orders), obtainable through interim proceedings. To grant such measures, the court requires fumus boni juris (likelihood of the right’s existence) and periculum in mora (risk of prejudice in waiting for legal protection until the decision on the merits).

More specifically, description orders aim at obtaining visual evidence of the infringement by means of a bailiff’s report describing, also with images, the infringing items and the means to create them, while seizures preserve evidence by putting goods under custody; information orders are meant to obtain information on the origin, on distribution networks of infringing products or on infringing services supply networks.

Another measure for gathering evidence, which prevailing case law deems admissible only in main proceedings and not in interim ones, is the exhibition order. This order may be issued by the judge upon the parties’ request to obtain specific documents.

To grant an exhibition order, the requesting party must provide compelling evidence supporting the merits of their claim and specifically identify the document in question, including details on its origin and content. In this sense, the exhibition order differs from description: while description seeks to uncover evidence, the exhibition order aims to introduce already identified evidence into the trial.

The urgency measures above, if obtained in interim proceedings, must be followed by main proceedings initiated within the timeframe set by the interim judge or, if no timeframe is specified, within twenty working days or thirty-one calendar days, whichever is longer. If main proceedings are not started within this period, the granted measures become ineffective, resulting in their revocation and the return of any seized materials to the defendant.

Article 67 of the Italian Industrial Property Code presumes that a product identical to one obtained through a patented process was made using that process, unless proven otherwise. This happens if, alternatively, a) the product obtained by the process is new in the market, or b) despite reasonable efforts, the patentee could not prove that the process used to manufacture the identical product corresponded to the patented one but, nonetheless, provided evidentiary elements for a substantial likelihood that the identical product was manufactured through the patented process.

The defendant can rebut this presumption by providing evidence of an alternative manufacturing process. In these circumstances, courts are required to respect the defendant’s trade secrets and typically use confidentiality measures to protect sensitive information shared by the defendant.

Italian law provides mechanism to protect confidential information.

Article 121 ter of the Italian Industrial Property Code contains a special provision for proceedings concerning the unlawful acquisition, use or disclosure of trade secrets. Trade secrets are defined by Articles 98-99 of the Italian Industrial Property Code as information which are secret, have economic value as secret and are subject to appropriate secrecy measures.

In trade secrets proceedings the judge may prohibit individuals appointed or delegated by him, the parties and their representatives and consultants, defense counsel, administrative personnel, witnesses, and other persons who in any capacity have access to the measures, acts and documents in the office file, from using or disclosing the trade secrets deemed confidential. This prohibition order, issued upon request of a party, remains effective even after the conclusion of the proceedings in which it was issued. The court may also adopt additional confidentiality measures, such as restricting access to hearings, records and documents to a limited number of individuals and redacting or omitting portions containing trade secrets in the final orders.

These measures become ineffective if, through a final judgment, it is determined that the trade secrets at issue in the case do not meet the requirements of Article 98 or if they become generally known or easily accessible to experts and practitioners in the field.

Italian law does not provide for post-grant opposition proceedings, however European patents can be opposed before the European Patent Office within 9 months of the grant. Since European patents designating Italy can be challenged before Italian courts under the transitional regime of Article 83 the UPCA and Article 345 bis of the Italian Industrial Property Code, if the EP is opposed, an EPO opposition proceeding may overlap with a pending patent litigation in Italy.

In such cases, Article 120 of the Italian Industrial Property Code provides that the court shall, taking into account the circumstances, order the suspension of the trial, once or several times, and set the date for the trial’s resumption. This allows litigation to be stayed pending administrative opposition proceedings.

As for the interaction between the opposition proceedings against a European patent and proceedings before the Unified Patent Court, Article 33.10 of the UPCA requires that parties shall inform the UPC of any opposition, limitation or revocation proceedings pending before the EPO. The UPC may stay proceedings when a rapid decision may be expected from the EPO. The Court may also request that the EPO expedite opposition proceedings.

Italian courts are not bound by foreign decisions, but they may consider them to support their reasoning, if the matter at stake has been already decided by a foreign jurisdiction (especially if by the court of another EU country or by the EPO Board of Appeal).

General rules on jurisdiction dictate that patent actions must be brought before the court in the jurisdiction of the defendant’s residence, domicile or abode (forum rei). If the defendant lacks residence in Italy, the action may proceed where the plaintiff is domiciled (forum actoris), or in Rome if neither party is domiciled in Italy. For infringement cases, the action may also be filed where the infringement occurred (forum commissi delicti).

With respect to foreign patents, under international law rules, Italian courts do not have jurisdiction over actions concerning validity and registration. However, they may assert jurisdiction in cases if where the defendant is domiciled in Italy. For infringements occurring within EU member states Article 4.1 of Bruxelles I bis Regulation applies, while for infringement occurred in non-EU member states jurisdiction is governed by Article 3.1 of Law no. 218/1995).

Italian Courts do not grant anti-suit injunctions.

Patent cases in Italy can be subject to arbitration, provided they involve rights that can be freely transferred or waived (diritti disponibili). Issues such as authorship or inventorship, therefore, are excluded from arbitration.

In general, arbitration is not commonly used in patent cases, which are typically handled through lengthy and complex trials.

However, there are specific instances in patent law where arbitration is explicitly provided for. For example, Article 64.4 of the Italian Industrial Property Code stipulates that, while the ordinary court retains jurisdiction to determine the existence of the right to fair premium, fee or price, if the parties cannot agree on the amount, it may be set by a panel of arbitrators. This panel is composed of three members: one appointed by each party and a third member chosen by the first two. In the event of disagreement, the third arbitrator is appointed by the president of the specialized section of the competent court where the service provider regularly conducts their duties.

Patent actions can be initiated at any time once the patentee has sufficient evidence of infringement (for infringement actions) or upon filing the patent (for invalidity actions). There are no procedural preconditions, such as pre-litigation steps, before commencing a patent action in Italy.

The statute of limitations for patent infringement follows general Italian law on non-contractual damages, with a five-year limit. The period begins when the patentee is reasonably informed of the act of infringement and its potential damage, requiring an active role in monitoring the market for unauthorized uses.

Licensees can bring infringement actions. Exclusive licensees, who hold the sole economic exploitation rights over the patent, may initiate actions independently unless the license agreement states otherwise. Non-exclusive licensees may only bring an infringement action with the patent owner’s consent. The patentee does not need to join an action brought by the licensee.

In addition, assignees of a patent may bring actions for infringements that occurred prior to the assignment.

Under Article 122 of the Italian Industrial Property Code, invalidity claims against a patent for failure to meet mandatory requirements can be brought by i) any party with a legal interest including any entrepreneur – current or potential – who perceives the patent as an obstacle to their business; and ii) the Public Prosecutor. Invalidity claims based on the ground that the registration was granted to a non-entitled person may only be brought by the rightful owner within two years of the patent grant. After this two-year period, such claims can be initiated by any party with a legal interest.

Examples of plaintiffs in invalidity claims for lack of mandatory requirements include i) the licensee of the patent (seeking to avoid paying royalties under the license); ii) the assignee of the patent (to avoid the consideration for assignment); iii) the defendant in infringement cases; and iv) “enti esponenziali di interessi di categoria” (i.e., entities legally dedicated to defending specific public interests).

Yes, interim injunctions are available in Italian patent litigation and are commonly granted when there is a significant risk of irreparable harm or economic prejudice that could escalate uncontrollably. Standard requirements for interim relief (fumus boni juris and periculum in mora) must be met.

Interim injunctions can be obtained on an ex parte basis if the court believes that notifying the opposing party may compromise the effectiveness of the measure. Ex parte injunctions are relatively rare (orders for evidence preservation – e.g., description – to prevent tampering are more likely to be granted ex parte).

Inter partes injunction, instead, are generally granted when Courts make a positive assessment of patent infringement.

Typically, an ex parte injunction can be granted within two weeks, while an inter partes injunction usually takes three to six months. Courts do not require cross-undertakings for damages before granting interim injunctions.

The final remedies available for patent infringement include:

1. Injunctions: Prohibit manufacturing, marketing, or using infringing products, often with penalties for non-compliance.
2. Market removal orders: Mandate the removal of infringing items from the market.
3. Destruction orders: Require the destruction of infringing goods.
4. Assignment orders: Transfer ownership of infringing items to the right holder.
5. Seizure of infringing products and manufacturing equipment.
6. Publication of the decision: Public disclosure of the judgment.
7. Compensation for damages: Monetary relief for losses incurred.

Injunctions, removal orders, and compensation for damages are the most commonly sought remedies, with injunctions and damages typically granted.

Under Article 125 of the Italian Industrial Property Code, infringers can be held liable for both monetary and non-monetary damages.

Monetary damages are calculated by considering both actual loss (danno emergente) and loss of profit (lucro cessante).

In patent litigation, actual losses typically include:

• Enforcement costs: Expenses incurred for enforcing rights, including investigative activities, monitoring and gathering evidence of infringement, legal and technical consultancy fees, and costs for analyses and technical tests, as well as internal expenses dedicated to patent enforcement.
• Investment costs: Costs incurred for investments jeopardized by the infringement, such as advertising expenses and venue rentals.
• Remedial expenses: Costs for mitigating the negative effects of the infringement, including press releases and promotional activities.
• Commercial standing damage (danno normativo): Detriment to the patentee’s monopoly position in the market.

Loss of profit in patent cases is typically calculated using one of three alternative methods:

• Lost profit of the patentee: Calculated by multiplying the quantity of infringing products sold by the price set by the patentee, minus manufacturing costs. Case law sometimes adds additional profit considerations, such as:
  • Convoyed sales: Sales of ancillary products.
  • Price erosion: Discounts applied by the patentee to compete with infringing products.
  • Bridge-head sales: Losses due to the infringer’s market positioning at the patentee’s expense.
• Infringer’s profits: Calculated based on gross operating margin or net profit.
• Royalty rate: Applying an industry-standard royalty rate (typically 5% for mechanical patents) to the infringer’s revenue generated by exploiting the infringing product.

The patentee can also request restitution of profits (retroversione degli utili) as an alternative to loss of profit or to cover any excess profit not accounted for by this type of damages.

Non-monetary damages in patent cases account for non-economic harm suffered by the patentee, which the court can grant only “where appropriate.” Examples include inconvenience caused by infringement to the patentee’s internal operations and harm to the patentee’s reputation or public image.

If damages cannot be precisely quantified, despite the patentee demonstrating harm, the court may assess them based on equitable considerations. Additional or exemplary damages are not available under Italian law.

Final injunctions are generally granted if the court finds infringement and valid patent rights. Public interest or proportionality considerations do not typically affect the decision. The scope of the injunction is tailored to prevent ongoing infringement.

Under Italian law, there are no specific provisions concerning actions for a declaration of non-infringement; however, Italian case law has recognized such actions, and they are referenced in Article 120.6 bis of the Italian Industrial Property Code regarding jurisdiction criteria.

Non-infringement action generally requires that the claimant demonstrate a legal interest in obtaining clarification, often by showing that the existence of the patent creates significant uncertainty about the legality of their business activities.

Typical costs in first instance proceedings including a witness expertise are approximately EUR 30,000-50.000 for interim measures and EUR 40,000-70.000 for main proceedings, plus 10.000-25.000 for technical consultants. Appeals to the Court of Appeal cost between EUR 45,000 and EUR 75.000, while appeals to the Italian Supreme Court generally cost over EUR 50,000. Costs are indicative only and may increase due to the complexity of the matter, amount of evidence to be examined, and in case of multiparty litigation. Court fees may vary, up to a maximum of EUR 2,072 for cases with an unidentifiable monetary value, with higher fees applying to cases with a specified value.

Under Italian procedural law, the losing party is typically required to cover the winning party’s costs, including legal fees, as calculated by an official table of fees approved by the Italian State. However, these reimbursable costs are generally lower than the actual expenses incurred.

The main growth areas in Italian patent litigation currently include mechanical engineering, pharmaceuticals and biotechnology.

The UPC is expected to centralize and streamline patent litigation across multiple jurisdictions. However, Italian SMEs, who may struggle to sustain the costs of opting into the UPC, might still prefer traditional national litigation.

Foreseeable new contentious issues in Italian patent litigation in the coming year may include AI-related inventions and enforcement of biotech patents. Additionally, the UPC practice will bring new procedural challenges and possibly influence also the case law of national courts.

Introducing an administrative opposition system for patent challenges would streamline patent invalidation and reduce the burden on the courts. Establishing such a mechanism would lower costs for plaintiffs and make patent disputes more accessible, especially for small companies.

A unique challenge for the international patent system will be how to handle inventions created autonomously by AI. AI systems challenge the concept of human inventorship, which is the legal cornerstone of current IP frameworks, and requires new solutions. Patent system may then need to adopt new legal definitions of inventorship, that might include qualifying AI as co-inventor.