At trial

What level of expertise can a patent owner expect from the courts?

In Italy, 21 courts have jurisdiction over patent cases, but few have the actual experience to offer a high level of expertise. Milan and Turin are considered the most experienced courts, followed by Bologna and Venice. At the other end of the spectrum, most of the courts located in southern Italy have limited experience in patent litigation and, if possible, litigants should try to avoid them.

Are cases decided by one judge, a panel of judges or a jury?

Cases involving infringement are heard by a single judge, while a panel of three judges decides all cases involving – or also involving – a validity claim. However, the panel convenes only to issue decisions; while the organisation of the case and its handling are delegated to a single judge, known as the ‘instructing judge’. 

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

There is no jury trial procedure. 

What role can and do expert witnesses play in proceedings?

There are two types of expert in Italian litigation: the parties’ own experts and those appointed by the courts. The role of the parties’ experts is to offer credible technical arguments in support of the position of each party. They do not give evidence, insofar as their statements are not made under oath; their primary role is to assist the party’s attorney (who usually has little or no technical education) in fully understanding the case that he or she is presenting to the court. In turn, the court is composed of judges who also have little or no formal technical education; thus, the court appoints an independent expert to help assess the technical issues relating to the validity and infringement of the patent.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Yes – the Code of Industrial Property specifically provides for the application of the doctrine of equivalents in defining the scope of protection of a patent, but it gives no specific guidance as to how to apply it. The trend in Italian jurisprudence is to rely on the following test:

  • Does the allegedly equivalent infringing solution perform substantially the same function as the invention?
  • Would a person skilled in the art and with the common general knowledge have realised at the priority date that such allegedly infringing solution was substantially the same as that of the invention?
  • Would the allegedly infringing solution at the priority date be obvious to the skilled person when compared to the invention?

However, the Court of Cassation (the Italian supreme court) took a different view by expressly rejecting the triple test mentioned above which, at least until now, had been broadly adopted by Italian courts in doctrine of equivalent analyses for all patent fields.

The ‘inventive core’ doctrine of equivalent analysis singles out the inventive core of the patent. Infringement occurs when, even though the third party’s allegedly infringing process or product comprises elements that are formally different from those claimed by the patent, it expresses the same inventive core as the patent.

Since precedents are not binding under Italian rules of procedure it will be interesting to see how the inventive core doctrine will fare with the lower courts.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

A patentee can obtain a preliminary injunction if it satisfies the following conditions:

  • On the basis of a preliminary assessment of the case, it is apparent that the claim for infringement is likely to succeed on the merits.
  • The patentee would likely suffer irreparable damage if it had to wait until the end of the proceedings on the merits to obtain an injunction.

Although the balance of convenience test has not traditionally been used in patent cases, this trend is now changing and, in particular, respondents are using this argument to fight against an application for preliminary injunction. 

An alleged infringer may take pre-emptive action by seeking a temporary order of non-infringement, which is the mirror image of a preliminary injunction. This may be helpful in order to prevent the patent owner from interfering with the alleged infringing business by and may be potentially relied upon by the infringer, if it is found liable in the subsequent main proceedings to argue that he or she acted innocently, based on the court’s findings, and cannot therefore be held liable for damages.

How are issues around infringement and validity treated in your jurisdiction?

Infringement and invalidity claims are usually dealt with together by the same court. As a rule, a claim for infringement is followed by a counterclaim for invalidity and vice versa, unless at the time the invalidity claim is filed the plaintiff has not yet started to use the invention. The court submits both validity and infringement questions to the court-appointed expert and the expert’s report will address and issue conclusions on both. 

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Italian courts consider decisions from other European jurisdictions, but do not give them substantial weight. However, if an Italian court disagrees with a European judgment in a parallel case, it usually sets out the reasons for its dissent.

Damages and remedies

Can the successful party obtain costs from the losing party?

As a rule, the successful party can recover 30% to 50% of the actual costs of the litigation. The court does not consider the actual costs borne by the prevailing party, but rather calculates the costs in accordance with a standard table prepared by the Ministry of Justice. The value of the case plays an important role in determining the amount to be awarded as costs. Thus, a party can recover more than what it spent in a highly valuable but simple case.

What are the typical remedies granted to a successful plaintiff?

The typical remedies granted to a successful plaintiff are:

  • a permanent injunction against use of the invention until the patent expires;
  • delivery or destruction of infringing items and tools and equipment exclusively used to make them;
  • a fine for any violation of the court order or delay in complying with it (in addition to the penalties for being in contempt of court);
  • publication of the judgment in the press at the infringer’s expenses;
  • damages (calculated on the basis of the patentee’s loss of profit or the infringer’s profits or, if these criteria do not apply or cannot be relied on with certainty, based on the reasonable royalty); and
  • attorneys’ fees.

How are damages awards calculated? Are punitive damages available?

Only compensatory damages are available and, until a recent Supreme Court decision (n 2017/16601), awards for punitive damages issued by foreign courts were considered unenforceable in Italy. Damages are calculated as the profit lost by the patentee or the profit made by the infringer, whichever is greater.

If these criteria are unhelpful (eg, if the patentee does not use the patent and the infringer made no profit), the court will calculate damages as a reasonable royalty on the infringer’s revenues generated by the use of the patented invention.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Permanent injunctions are the typical remedy and courts will grant them in all cases in which the patent has not expired. However, there is a potential exception to this rule where the enforced patent is standard essential. If the alleged infringer expressed its willingness to take a licence on fair, reasonable and non-discriminatory terms, but no agreement was reached, in the subsequent litigation the patentee’s request for a permanent injunction is unlikely to be allowed. However, the law on this issue is not yet fully developed and thus uncertainty still exists.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

The duration of first-instance proceedings can vary substantially from court to court, although as a standard, the courts seek to conclude patent cases within three years of filing. The Turin and Milan courts meet this target more consistently, with the Rome and Florence courts among the slower venues. Therefore, it is important to select the right court. Once the court is selected, expediting the process is difficult.

How much should a litigant plan to pay to take a case through to a first-instance decision?

The costs of patent litigation depend on a number of factors (eg, the area of technology, the number of patents involved and whether lab tests are necessary). On average, in most fields of technology, the total cost of patent litigation relating to one patent is around €150,000, with an additional €100,000 for each additional patent.

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