Italy: Patents Comparative Guide

1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

• The Italian Code of Industrial Property (ICIP) (Legislative Decree 30/2005); and
• The ICIP Implementing Regulation (Ministerial Decree 33/2010)

References to patents, can also be found in the Civil Code and the Criminal Code.

Additionally, Italy is a contracting party to:

• the Paris Convention for the Protection of Industrial Property (1883);
• the Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Inventions (1963);
• the Patent Cooperation Treaty (1970);
• the European Patent Convention (1973, revised in 2000);
• the World Trade Organisation Agreement on Trade-related Aspects of Intellectual Property Rights (1994);
• the EU Customs Enforcement Regulation (608/2013); and
• the Unified Patent Court Agreement (ratified in Italy by Law 214/2016).

1.2 Who can register a patent?

The right to patent an invention belongs to the inventor or his or her successor in title (Article 63(2) of the ICIP).

Where an invention is made in the performance or fulfilment of a work contract or employment relationship, and the relevant activity is contemplated by the contract or relationship and is remunerated for that purpose, the rights deriving from the invention belong to the employer (Article 64(1) of the ICIP). This does not apply if the employer is a university or a public research agency (Article 65(1) of the ICIP).

2 Rights

2.1 What rights are obtained when a patent is registered?

Patent rights consist of the exclusive right to implement the invention and profit from the same in the Italian territory (Article 66(1) of the Italian Code of Industrial Property (ICIP)).

If the object of the patent is a product, the patent grants the owner the right to prohibit third parties from producing, using, putting on the market, selling or importing such product.

If the object of the patent is a process, the patent grants the owner the right to prohibit third parties from applying such process, as well from producing, using, putting on the market, selling or importing products directly obtained by such process.

2.2 How can a patent owner enforce its rights?

The main route for a patent owner to enforce its rights is by bringing legal proceedings for patent infringement in court.

Either civil proceedings or criminal proceedings can be initiated.

Insofar as civil proceedings are concerned, specialised IP divisions have been created in the courts of the main Italian cities. Therefore, if civil proceedings are initiated, the proceedings will be handled by the competent court with a specialised IP section.

Insofar as criminal proceedings are concerned, no specialised IP divisions have been created.

Therefore, if criminal proceedings are initiated, they will be heard by the competent court.

Territorial jurisdiction is mainly based on the infringer's residence or domicile. However, as an alternative, the place in which the infringement has taken place can be considered in determining territorial jurisdiction.

2.3 For how long are patents enforceable?

A patent is enforceable for as long as it is in force. The duration of a patent is 20 years from the filing date (assuming that no supplementary protection certificate is granted) and a maintenance fee must be paid annually starting from the fifth year from the filing date.

Nonetheless, an expired patent can be enforced to claim for past damages if an infringement took place while the patent was in force. In this case, a limitation period of five years is provided for under Italian patent law.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

The Italian Patent and Trademark Office (UIBM), a body of the Italian Ministry of Economic Development, controls the registration procedure of Italian patent applications.

3.2 What is the cost of registration?

The official filing fee is €50 in case of electronic filing and ranges from €120 to €600 for paper filings.

An additional official fee of €45 is provided for each claim exceeding 10 claims.

The search fee is €200. No search fee need be paid if an English translation of the claims is filed.

If a patent attorney is appointed (which is not mandatory, but highly recommended), the professional charges will be agreed between the parties.

3.3 What are the grounds to reject a patent application?

A patent application can be rejected if the claimed invention does not fulfil the requirements set out in the Italian Code of Industrial Property (ICIP), as follows:

• Novelty: An invention is considered novel if it is not anticipated by the prior art (Article 46 of the ICIP);
• Inventive step: An invention is considered to involve an inventive step if it is not obvious to the person skilled in the art from prior art (Article 48 of the ICIP);
• Industrial applicability: The object of invention must be capable of being manufactured or utilised in any kind of industry (Article 49 of the ICIP); and
• Lawfulness: The object of the invention must not be contrary to public order or morality (Article 50 of the ICIP).

Moreover, under Article 45 of the ICIP, a patent cannot be granted for:

• discoveries, scientific theories or mathematical methods as such;
• plans, principles and methods for intellectual activities, for games or for business activities as such;
• computer programs as such;
• presentation of information as such;
• methods for surgical or therapeutic treatments for humans or animals;
• diagnostic methods applied to humans or animals; and
• plant varieties, animal species or essentially biological processes for obtaining plant varieties or animal species.

Furthermore, a patent application can be rejected if the invention is not disclosed in a sufficiently clear and complete manner (Article 51 of the ICIP).

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

No possibilities for accelerated examination are available in Italy.

However, if legal proceedings have been initiated in court, the judge (not the patent owner) may file a request with the UIBM to accelerate the examination of the enforced patent application.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

A patent cannot be granted for:

• discoveries, scientific theories or mathematical methods as such;
• plans, principles or methods for intellectual activities, for games or for business activities as such;
• computer programs as such;
• presentation of information as such;
• methods for surgical or therapeutic treatments for humans or animals;
• diagnostic methods applied to humans or animals; or
• plant varieties, animal species or essentially biological processes for obtaining plant varieties or animal species.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

Supplementary protection certificates (SPCs) are available for medicinal products and plant protection products. The purpose of the SPC is to compensate the owner where the term of the patent monopoly has been eroded due to the need to obtain a marketing authorisation for the corresponding product before implementing the invention and profiting from the same. Accordingly, the SPC does not cover the whole scope of protection of the corresponding patent, but extends only to the product for which the marketing authorisation has been granted.

The duration of the SPC is determined by:

• calculating the difference between the filing date of the patent and the date of first authorisation to place the corresponding product on the market; and
• subtracting five years from the resulting difference.

In any case, the maximum duration of an SPC is five years.

A six-month extension of an SPC can be requested for medicinal products intended for paediatric use.

3.7 What subject matter is patent eligible?

Under Article 45 of the ICIP, patents may be granted for inventions in any technical field which:

• are new;
• involve an inventive step; and
• are susceptible of industrial application.

According to Italian law, the following are not considered inventions:

• discoveries, scientific theories and mathematical methods as such;
• plans, principles or methods for intellectual activities, for games or for business activities, and computer programs as such; and
• presentations of information as such.

Furthermore, patents cannot be granted for the following:

• methods for surgical or therapeutic treatment of the human or animal bodies and diagnostic methods applied to human or animal bodies; and
• plant varieties or animal species and essentially biological processes for the production of animals or plants, including new plant varieties with respect to which the invention consists exclusively of the genetic modification of other plant varieties, even if that modification is the result of a genetic engineering process.

The above does not apply to:

• microbiological processes and products obtained through such processes; or
• products, and in particular substances or compositions, for the use of one of the specified methods.

A patent must further refer to a single invention. Accordingly, a patent may contain several independent claims, provided that they all refer to the same inventive concept. In general, one independent claim in each category (eg, product, method) is accepted.

Finally, the patented subject matter cannot extend beyond the contents of the initial application.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

An appeal against decisions of the UIBM that totally or partially reject a patent application may be filed with the Board of Appeal within 60 days of the date of receipt of notification of the decision (Article 135 of the ICIP).

The Board of Appeal is comprised of a chairman, a deputy chairman and eight members chosen from among judges of a level not lower than appeal court judge, after consulting with the Supreme Judicial Council, or from among professors of juridical fields at universities or superior state institutions.

Notification of the appeal must be filed with the UIBM and served on the opponents to which the notice directly refers within 60 days of the date on which the interested party received the notification or was informed of it. The appeal, along with the following documents, must be filed within 30 days of the last notification:

• proof of notification;
• a copy of the appealed decision, if the appellant is in possession of the same;
• copies of the documents that the appellant intends to use in the proceedings; and
• proof of payment of the related fee.

In case of a negative outcome in the proceedings before the Board of Appeal, the case can be brought before the Court of Cassation (Article 136terdecies of the ICIP).

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

The validity of an issued patent can only be challenged in court.

The competent court for the nullity action is the court with territorial jurisdiction where the patent owner has its residence or domicile.

4.2 How can the validity of an issued patent be challenged?

A nullity action can be filed before a court in independent proceedings.

Moreover, if infringement proceedings are initiated by the patent owner, the alleged infringer may challenge the validity of the enforced patent. In this case, validity and infringement are handled within the same proceedings.

4.3 What are the grounds to invalidate an issued patent?

Under Article 76 of the Italian Code of Industrial Property (ICIP), a patent is null if:

• the claimed subject matter is not considered an invention (see question 3.5);
• the invention lacks novelty, inventive step or industrial applicability, or is unlawful;
• the invention is not disclosed in a sufficiently clear and complete manner so as to allow the person skilled in the art to implement it;
• the subject matter of the patent extends beyond the contents of the application as originally filed or the protection of the patent has been extended; or
• the owner of the patent did not have the right to file the application (this ground being subject to certain circumstances).

4.4 What is the evidentiary standard to invalidate an issued patent?

A patent shall be presumed valid. The burden of establishing the invalidity of a patent or any claim thereof rests on the party asserting such invalidity (Article 121(1) of the ICIP).

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

No post-grant review or opposition procedure is available in Italy. The validity of a patent can only be challenged in court. Observations may be filed by third parties during grant, but are retained in the file and are not evaluated by the Italian Patent and Trademark Office (UIBM).

4.6 Who can oppose a granted patent?

No post-grant review or opposition procedure is available in Italy. The validity of a patent can only be challenged in court (see question 4.5).

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

No post-grant review or opposition procedure is available in Italy. The validity of a patent can only be challenged in court (see question 4.5).

4.8 What are the grounds to file an opposition?

No post-grant review or opposition procedure is available in Italy. The validity of a patent can only be challenged in court (see question 4.5).

4.9 What are the possible outcomes when an opposition is filed?

No post-grant review or opposition procedure is available in Italy. The validity of a patent can only be challenged in court (see question 4.5).

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

Italian law does not provide for oppositions. The validity of a patent must be challenged in court.

A nullity action can be initiated in independent proceedings by any party with an interest in having the patent declared null.

In addition, if infringement proceedings are initiated by the patent owner, the alleged infringer may challenge the validity of the enforced patent in the same proceedings.

In both cases, the burden of proof is borne by the party challenging the validity of the patent (Article 121(1) of the ICIP).

In most cases, the court will appoint a technical expert, who is usually chosen from among the Italian patent attorneys enrolled in a dedicated list available to the courts. The technical expert appointed by the court will request the technical experts appointed by the parties (the party challenging the patent validity and the patent owner) to provide one or more technical briefs for setting forth evidence and supporting their positions; the court-appointed expert will then provide the court with his or her technical opinion on patent validity.

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

No post-grant review or opposition procedure is available in Italy. The validity of a patent can only be challenged in court (see question 4.5).

5 Patent enforceability

5.1 What makes a patent unenforceable?

As a general rule, Italian patents that are not held to be invalid are enforceable.

However, a valid patent cannot be enforced if the alleged infringing activity is carried out in the following circumstances:

• experimental or personal use of the invention;
• studies or trials aimed at obtaining marketing authorisation for a drug;
• extemporaneous preparation of units of medicines in pharmacies for prescription purposes, provided that no industrially produced active ingredients are used;
• use of the patented invention on ships, in specific cases; or
• use by parties that were using the invention in their business in the 12 months before the filing of the patent application, provided that the use continues in the same way and within the same limits.

Antitrust law does not limit the scope of patent protection that can be sought or obtained. However, in certain cases it can limit the possibility for the patent owner to enforce the patent rights (‘essential facilities').

5.2 What are the inequitable conduct standards?

No inequitable conduct standards are defined in the Italian Code of Industrial Property insofar as patent applications are concerned.

In particular, even if the applicant is aware of relevant prior art, there is no obligation for the applicant to submit such relevant prior art to the Italian Patent and Trademark Office.

5.3 What duty of candour is required of the patent office?

No duty of candour is required according to Italian patent law and regulations.

6 Patent infringement

6.1 What Constitutes Patent Infringement?

The limits of the protection of a patent are determined by its claims, which must indicate specifically what is intended to constitute the subject matter of the patent (Article 52 of the Italian Code of Industrial Property (ICIP)).

A patent is infringed when third parties, without the consent of the patent owner, implement the invention and profit from the same in the Italian territory (Article 66 of the ICIP). In particular, a patent is infringed where third parties do any of the following, without the consent of the patent owner:

• where the object of the patent is a product, producing, using, putting on the market, selling or importing the product in question for such purposes;
• where the object of the patent is a process, applying the process or using, putting on the market, selling or importing a product directly obtained by the process in question for such purposes; or
• supplying or offering to supply to parties other than those entitled to use the patented invention the means relating to an indispensable element of that invention and necessary for its implementation in the territory of a country where the invention is protected, if the third party is aware of the suitability and destination of those means for implementing the invention or can obtain such knowledge with ordinary diligence (so-called ‘contributory infringement'), unless said means consist of products that are currently on the market and the third party does not induce the person to which they are supplied to carry out the acts listed above.

6.2 Does your jurisdiction apply the doctrine of equivalents?

Yes, in order to determine the scope of the protection granted by the patent, every element that is equivalent to an element indicated in the claims must be considered (Article 52 of the ICIP).

In this regard, the Supreme Court of Cassation recently confirmed (Order 2977 filed on 7 February 2020) that in determining the scope of protection conferred by the patent, the court must not limit itself to the literal content of the claims, interpreted in light of the description and drawings, but must balance the fair protection of the owner with the reasonable legal certainty of third parties; and must thus consider any element substantially equivalent to an element indicated in the claims. To this end, it may use different methods aimed at ascertaining the equivalence of the inventive solution.

On the one hand, the adoption of the so-called ‘triple identity' test or ‘function, way, result' test is advocated – a criterion taken from US jurisprudence which would lead to the detection of infringement by equivalents where the variations made in the allegedly infringing product compared to the patent text introduce different means which nonetheless fulfil the same function performed by the means provided in the claim and ensure, in the same way, the achievement of the same technical result. One invention is thus considered equivalent to another if it performs substantially the same function, in the same way and to obtain the same result.

Another criterion, elaborated in German jurisprudence, considers as a symptom of infringement by equivalents the obviousness or non-originality of the substitute solution adopted by the infringer with respect to the patented solution, having regard to the average knowledge of the technician in the field. The originality of the second solution excludes the configurability of an infringement for equivalents, and if anything, can constitute the basis of an independent invention outside the scope of the first invention.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

An Italian patent is infringed when third parties, without the consent of the patent owner, implement the invention and profit from the same in the Italian territory only (Article 66 of the ICIP).

However, in case of contributory infringement, if the contribution to the infringement (of an invention protected in Italy) is carried out in Italy and the direct and final infringement takes place in any country where the invention is protected (including a foreign country), there is a contribution to infringement under Article 66 of the ICIP.

6.4 What are the standards for wilful infringement?

The standard by which infringement of a patent is determined is strictly objective – that is, it is completely independent of any proof of negligence or wilful misconduct – and a wide range of civil sanctions can be imposed on the losing party.

However, in case of wilful infringement, criminal sanctions can be imposed. Moreover, special actions can be taken if the infringement is considered an act of piracy – that is, if it is carried out wilfully and systematically (Article 144 of the ICIP).

6.5 Which parties can bring an infringement action?

An infringement action can be brought by the patent owner or by a licensee. While an exclusive licensee can file an infringement action even in the absence of express authorisation from the patent owner, a non-exclusive licensee can bring an infringement action only with the consent of the patent owner (but in any case, it can bring an action for unfair competition). Distributors cannot currently file infringement actions.

In case of co-ownership, settled case law recognises that each co-owner has the power to act separately from the other co-owners in defence of the common patent.

6.6 How soon after learning of infringing activity must an infringement action be brought?

No time limit is set for initiating a legal action on the merits. However, according to Italian law, a limitation period of five years is set for compensation for damages (Article 2947 of the Civil Code). Accordingly, the patent owner can seek compensation for damages relating to infringing activities that took place more than five years before the filing of the infringement action before the court.

Insofar as precautionary proceedings are concerned, there is no pre-determined time limit. In each case, the court will evaluate whether the requirement of urgency (‘periculum in mora') is satisfied.

According to common practice, if more than six months have elapsed between the date on which the patent owner became aware of the infringing activity and the date of filing of a request for precautionary proceeding, it is considered that the requirement of urgency is not met.

6.7 What are the pleading standards to initiate a suit?

The plaintiff in patent infringement proceedings should submit sufficient facts so that the statement of claim can fully illustrate how the patent has been infringed. In the statement of claim, the plaintiff should offer to provide the necessary evidence to support its allegations.

Italian patents are considered valid unless proven to the contrary, so the plaintiff has no obligation to submit evidence that proves the validity of the enforced patent.

6.8 In which venues may a patent infringement action be brought?

In Italy, patent infringement is governed both by civil law and by criminal law.

In civil proceedings, the infringement action will be heard by a specialised IP court. One or two specialised IP courts have been established in each Italian region or autonomous province (there are currently 22 commercial courts that specialise in IP litigation).

In principle, the infringement action should be brought before the court with territorial jurisdiction in the area where the alleged infringer has its residence, domicile or place of abode. If the alleged infringer does not have a residence, domicile or place of abode in the Italian territory, the action should be brought in the court with territorial jurisdiction in the area where the plaintiff has its residence, domicile or place of abode (Article 120(2) of the ICIP).

As an alternative, the infringement action can be brought in the court with territorial jurisdiction in the area where the infringing activity took place (‘locus commissi delicti') (Article 120(6) of the ICIP). This option is often exercised in order to bring the infringement action before larger courts with experienced judges.

In criminal proceedings, there are no IP specialised courts.

6.9 What are the jurisdictional requirements for each venue?

In Italy, patent infringement is governed both by civil law and by criminal law.

In civil proceedings, the infringement action will be heard by a specialised IP court. One or two specialised IP courts have been established in each Italian region or autonomous province (there are currently 22 commercial courts that specialises in IP litigation). An appeal will be heard by the specialised section of the court of appeal where the first instance case was heard.

In principle, the infringement action should be brought before the court with territorial jurisdiction in the area where the alleged infringer has its residence, domicile or place of abode. If the alleged infringer does not have a residence, domicile or place of abode in the Italian territory, the action should be brought in the court with territorial jurisdiction in the area where the plaintiff has its residence, domicile or place of abode (Article 120(2) of the ICIP and Articles 5 and 7 of the Recast Brussels Regulation)

As an alternative, the infringement action can be brought in the court with territorial jurisdiction in the area where the infringing activity took place (‘locus commissi delicti') (Article 120(6) of the ICIP). This option is often exercised in order to bring the infringement action before larger courts with experienced judges.

6.10 Who is the fact finder in an infringement action?

Professional judges, who will discuss and assess all factual and legal issues.

In civil proceedings, in most cases, the court will appoint a technical expert, who is usually chosen from among the Italian patent attorneys enrolled in a dedicated list available to the court. Although the judge makes the final decision, insofar as the technical aspects are concerned, he or she will usually rely on the technical opinion of the appointed technical expert.

The court-appointed technical expert will request the technical experts appointed by the parties (the party challenging the patent validity and the patent owner) to provide one or more technical briefs to set forth evidence and support their positions; and will then provide the court with his or her technical opinion on patent validity.

In any case, the case will be decided only on the facts and evidence that the parties submit during the proceedings: neither the judge nor the technical expert (if appointed) will search for further evidence. Accordingly, it is the parties' sole responsibility to set forth all facts and evidence to support their respective positions (Article 121(1) of the ICIP).

In criminal proceedings, a prosecutor will bring the case before the judge. Here too, the prosecutor will rely upon the facts and evidence provided by the patent owner.

In criminal proceedings, the courts may also appoint a technical expert to provide an opinion on technical issues.

6.11 Does the fact finder change based on venue?

No. In all cases, professional judges will discuss and assess all factual and legal issues. It is the parties' sole responsibility to set forth all facts and evidence supporting their respective positions.

6.12 What are the steps leading up to a trial?

In case of civil proceedings, the first step is for the plaintiff to file and serve the statement of case before the judge. The plaintiff must prove that it is entitled to file the infringement action and provide evidence of the alleged infringement.

The defendant will be notified accordingly and will be allowed to file a defensive brief.

Such defensive brief can be accompanied by a counterclaim for invalidity of the enforced patent.

In most cases, the courts will appoint a technical expert, who is usually chosen from among Italian patent attorneys enrolled in a dedicated list available to the judges. Although the judge makes the final decision on both technical and legal issues, insofar as the technical aspects are concerned, he or she will usually rely on the technical opinion of the appointed technical expert.

The technical expert will request the parties to exchange one or more technical briefs (usually two technical briefs) to provide evidence and arguments, and will then draft his or her technical opinion.

The parties have a chance to provide comments on the technical opinion of the technical expert before it is submitted to the judge.

In criminal proceedings, the first step is for the plaintiff to file and serve the statement of case before the prosecutor, who will decide whether to bring the case before the judge.

6.13 What remedies are available for patent infringement?

In civil proceedings, the following remedies are available for patent infringement (Article 124 of the ICIP):

• injunction and withdrawal from the market (against the infringer and possibly against any intermediary that is a party in the proceedings and whose services are used to carry out the infringement); an injunction may be accompanied by an indication of the sum due for non-compliance with the injunction itself;
• compensation for damages;
• destruction of all infringing goods in the possession or power of the defendant, as well as of all means unequivocally used to manufacture the infringing goods or implement the infringing process;
• as an alternative to the above, assignment of all infringing goods in the possession or power of the defendant, as well as of all means unequivocally used to manufacture the infringing goods or implement the infringing process, to the patent owner; and
• publication of the decision through mainstream and/or specialised media.

It is also possible for a party to seek a declaration of non-infringement in relation to a product or process.

In case of criminal proceedings, a fine and/or prison sentence can be imposed on the infringer.

6.14 Is an appeal available and what are the grounds to appeal?

All first-instance court decisions can be appealed.

The regulations that generally apply to civil proceedings will apply (see Articles 100, 325, 329 and 339 of the Civil Code).

Appeals involve a review of the earlier decision. In the appeal proceedings, the court of appeal will consider whether to uphold, annul or confirm the earlier decision. No new claims are admitted.

The losing party may appeal to the Court of Cassation.

7 Discovery

7.1 Is discovery available during litigation?

In Italy, discovery is available neither in the pre-trial phase nor during the trial; rather, each party bears the burden of proving its own claims.

As a precautionary measure, the patent owner may file a request to the court for a description of the infringing products or process (as well as seizure of the infringing items or of means that are unequivocally intended to implement the infringing process) (Article 129 of the Italian Code of Industrial Property (ICIP)). It is sufficient if the infringement has not yet occurred, but is imminent.

Description at the premises of the alleged infringer, its distributors or any other party that participates in the infringement can be requested.

Usually, the plaintiff requests that description be carried out without informing the defendant. The court may grant that the description be carried out either:

• without informing the defendant (‘inaudita altera parte'); or
• after having notified the defendant and heard both parties.

Description should be granted only where the features and details of the allegedly infringing products or process cannot be obtained through other channels (eg, by buying sample products).

Description is carried out by an officer of the court, usually accompanied by a technical expert appointed by the judge. The plaintiff's attorney and technical experts can attend the description.

Description aims to determine:

• the features of the allegedly infringing products or process;
• the means of manufacturing the allegedly infringing products or of implementing the allegedly infringing process; and
• the extent of the alleged infringement (ie, both technical and financial documents can be obtained).

As description is a precautionary measure, an action on the merits must be initiated within a term set by the judge or, in the absence of such indication, within a term of 20 business days or 31 calendar days (Article 132 of the ICIP).

7.2 What kinds of discovery are available?

Discovery is not available under Italian law, either before or during the trial.

However, as a precautionary measure, the patent owner may file a request to the court for description of the infringing product or process (as well as seizure of the infringing items or of means that are unequivocally intended to implement the infringing process) (Article 129 of the ICIP).

A description can be granted without informing the defendant (‘inaudita altera parte') or after having notified the defendant and heard both parties.

Description at the premises of the alleged infringer, its distributors or any other party that participates in the infringement can be requested.

Description aims to determine:

• the features of the allegedly infringing products or process;
• the means of manufacturing the allegedly infringing products or of implementing the allegedly infringing process; and
• the extent of the alleged infringement (ie, both technical and financial documents can be obtained).

As description is a precautionary measure, an action on the merits must be initiated within a term set by the judge or, in the absence of such indication, within a term of 20 business days or 31 calendar days (Article 132 of the ICIP).

7.3 Are there any limitations to the amount of discovery allowed?

Discovery is not available under Italian law, either before or during the trial.

However, as a precautionary measure, the patent owner may file a request to the court for description of the infringing product or process (as well as seizure of the infringing items or of means that are unequivocally intended to implement the infringing process) (Article 129 of the ICIP).

There is no limitation on the amount of documents that may inspected during description of the allegedly infringing product or process. Nonetheless, extreme care must be taken to preserve the confidential information and data of the defendant.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

In most cases, and especially in civil proceedings, the courts will appoint a technical expert, usually chosen from among the Italian patent attorneys enrolled on a dedicated list available to the judges.

The court-appointed technical expert will request the technical experts appointed by the parties (the patent owner and the alleged infringer) to provide one or more technical briefs to set forth evidence and support their positions; and will then provide the court with his or her technical opinion on patent validity.

Although the judge makes the final decision on both technical and legal issues, insofar as technical aspects are concerned, he or she will usually rely on the technical opinion of the appointed technical expert.

8.2 What is the legal standard used to define claim terms?

The claims must indicate specifically what is intended to constitute the subject matter of the patent. Accordingly, the limits of protection are determined by the claims. However, the description and designs will be used to interpret the claims (Article 52 of the Italian Code of Industrial Property (ICIP)).

To determine the scope of the protection granted by the patent, every element that is equivalent to an element indicated in the claims must be considered.

In interpreting the claims, the fictional character of the ‘person skilled in the art' is considered. Such person skilled in the art is considered to have deep knowledge of the technical field, but no inventive skills.

In general, it is considered that the person skilled in the art is willing to understand the invention as disclosed in the specification, not to misunderstand it.

8.3 What evidence does the tribunal consider in defining claim terms?

In most cases, and especially in civil proceedings, the courts will appoint a technical expert, usually chosen from among the Italian patent attorneys enrolled on a dedicated list available to the judges.

Although the judge makes the final decision on both technical and legal issues, insofar as technical aspects are concerned, he or she will usually rely on the technical opinion of the appointed technical expert.

9 Remedies

9.1 Are injunctions available?

Both preliminary and permanent injunctions are available.

As a precautionary measure, the patent owner may request that a preliminary injunction be issued against any imminent or actual infringement of its rights. More specifically, the patent owner can seek an injunction against the manufacture, trading or use of infringing items (Article 131 of the Italian Code of Industrial Property (ICIP)).

As a preliminary injunction is a precautionary measure, an action on the merits must be initiated within a term set by the judge or, in the absence of such indication, within a term of 20 business days or 31 calendar days (Article 132 of the ICIP).

A permanent injunction is usually the natural outcome of proceedings on the merits, in which infringement of the patent is assessed.

In both cases, the court may set a sum due for any act of non-compliance with the injunction.

9.2 What is the standard to obtain an injunction?

A permanent injunction is usually the natural outcome of proceedings on the merits, in which infringement of the patent is assessed.

As a preliminary injunction is a precautionary measure, the requirements for precautionary measures must be met – namely:

• ‘fumus boni iuris' – that is, the plaintiff must prove that there is a ‘prima facie' likelihood that the patent has been infringed by the defendant); and
• ‘periculum in mora' (urgency).

A delay of more than six months between when the patent holder learns of the infringement and when it requests preliminary measures will be considered too long and the measures are unlikely to be granted.

The plaintiff must prove:

• its rights and the validity of the same;
• the infringement of the patent that has occurred; and
• the existence of a risk of an irreparable damage.

Evidence may be filed through witness testimony and/or documents.

The competent judge may also appoint a technical expert.

9.3 Are damages available?

Yes (Article 125 of the ICIP).

Damages are based on:

• negative economic consequences;
• lost profits;
• benefits deriving from the exploitation of the patent by the alleged infringer; and
• moral damages.

Punitive damages are not available under Italian law. A technical expert can be appointed to calculate damages.

9.4 What types of damages are available?

Damages are based on:

• negative economic consequences;
• lost profits;
• benefits deriving from the exploitation of the patent by the alleged infringer; and
• moral damages.

The judgment awarding compensation for damages may order payment of a lump sum based on the proceedings and the presumptions resulting therefrom. In this case, lost profits cannot be less than the royalties that the infringer would have had to pay had it lawfully obtained a licence from the patent owner.

The patent owner may request recovery of the profits obtained by the infringer, either as an alternative to compensation for lost profits or to the extent that they exceed such compensation.

9.5 What is the standard to obtain certain types of injunctions?

A permanent injunction is usually the natural outcome of a proceeding on the merits in which infringement of the patent is assessed.

As a preliminary injunction is a precautionary measure, the requirements for precautionary measures must be met – namely:

• ‘fumus boni iuris' – that is, the plaintiff must prove that there is a ‘prima facie' likelihood that the patent has been infringed by the defendant); and
• ‘periculum in mora' (urgency).

A delay of more than six months between when the patent holder learns of the infringement and when it requests preliminary measures will be considered too long and the measures are unlikely to be granted.

The plaintiff must prove:

• its rights and the validity of the same;
• the infringement of the patent that has occurred; and
• the existence of a risk of an irreparable damage.

Evidence may be filed through witness testimony and/or documents.

The competent judge may also appoint a technical expert.

9.6 Is it possible to increase or multiply damages due to a party's actions?

Punitive damages are not generally available.

If the court ruling on the infringement orders an injunction in addition to compensation for damages, the award may be accompanied by an indication of the sum due for any act of non-compliance with the injunction itself (Article 131 of the ICIP).

9.7 Are sanctions available?

Civil, criminal and administrative sanctions are available.

During the proceedings, any party that refuses to respond to the questions of the court or provides false information to the court may be sanctioned (Article 127 of the ICIP).

Where an injunction is imposed, any subsequent act by the infringer that is not compliant with such injunction may be sanctioned (Article 131 of the ICIP).

Sanctions are usually imposed on the infringer by the state prosecutor in criminal proceedings.

9.8 What kinds of sanctions are available?

Civil, criminal and administrative sanctions are available.

During the proceedings, any party that refuses to respond to the questions of the court or provides false information to the court may be sanctioned (Article 127 of the ICIP).

Where an injunction is imposed, any subsequent act by the infringer that is not compliant with such injunction may be sanctioned (Article 131 of the ICIP).

Sanctions are usually imposed on the infringer by the state prosecutor in criminal proceedings.

9.9 Can a party obtain attorneys' fees?

Yes, the losing party must reimburse the fees of the winning party.

This also applies to invalidity proceedings.

9.10 What is the standard to obtain attorneys' fees?

The losing party must reimburse the fees of the winning party. In practice, the winning party usually gets about half of its legal fees reimbursed.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

A party can obtain all patent rights through a licence:

• If the object of the patent is a product, the licence may grant the licensee the right to produce, use, put on the market, sell or import such product; and
• If the object of the patent is a process, the licence may grant the licensee the right to apply such process, and to produce, use, put on the market, sell or import the products directly obtained through such process.

Notwithstanding the above, the licence agreement may grant only some of the above rights.

In general, a licence may take one of the following forms:

• Exclusive: The licensee has exclusive to use the licensed technology for a particular territory; the licensor cannot grant other licences and cannot use the licensed technology;
• Sole: The licensor cannot grant other licences, but it may use the licensed technology itself; or
• Non-exclusive: The licensor may grant other licences and both the licensee and the licensor can use the licensed technology (unless contractual obligations state otherwise).

10.2 What limits can a patent owner impose on a licence?

The parties may agree to limit the rights conferred on the licensee. Such limitations may relate to, for example:

• a specific product;
• a specific geographical area; or
• a specific right (eg, manufacture, sale).

In any case, limitations must be compliant with Articles 1341 and 1342 of the Italian Code concerning unfair clauses.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

Patent holders can file proceedings for both unfair competition and patent infringement.

Antitrust laws do not limit the scope of patent protection that can be sought or obtained. However, in certain cases they can limit the possibility for the patent owner to enforce the patent rights (‘essential facilities').

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.