Ex parte descriptions follow their own special rules and are quite unique among provisional measures available under Italian IP laws. This has been confirmed in a recent decision made by the IP Court of Milan (order of 12/28/2013, Docket no. 71667/2013).

A company owning a European patent relating to micromechanical elements, which it believed was infringed by an Italian IT company’s process, requested the IP Court of Milan to authorise an ex parte description of the process at the premises of the latter. The Court granted the order and the applicant carried it through with the supervision of a court bailiff assisted by a patent expert appointed by the Court.

At the subsequent review hearing, however, the respondent requested that the measure be revoked on both substantial and procedural grounds. Specifically, the respondent claimed the invalidity of the patent in suit and the absence of any infringement; the lack of danger of irreparable harm (periculum in mora) on account that the applicant had been aware of the allegedly infringing process for a long time; and a breach of the court order on the grounds that the description had been carried out in the presence of two representatives of the applicant, while the order, as a measure to protect confidential information, only authorised legal counsel and party experts to take part.

The IP Court of Milan, however, took a different view, and decided to confirm the order, thus preserving the evidence collected through the description.

The basis for the Court decision is the acknowledgement of the specific function of the description within the legal system: to acquire and preserve the evidence in view of infringement proceedings. In other words, the true subject matter of the description, unlike with other provisional measures meant to protect IP rights, is the evidence, rather than the right itself.

With this in mind, the Court argued, exceptions relating to the merits of the case have no place in description proceedings, unless they are prima facie evident – which the Court did not find to be the case. Instead, what’s mainly relevant in description proceedings, the Court explained, is the pertinence of the evidence sought to the alleged infringement.

As regards periculum in mora on the other hand, what must be assessed in the Court’s view was the actual need for a description in order to acquire and/or preserve the evidence of the alleged infringement, with the primary focus on whether said evidence lies in the control of the other party, and whether there is a risk of it being altered or destroyed. In this respect, the Court pointed out that, in the specific matter before it ” …. The alleged knowledge of the process in suit through other sources of information (by the applicant) does not rule out the need to obtain evidence of the alleged infringement by means of a description, since only the latter enables a party to determine with certainty the actual use and implementation of the process by the respondent and to preserve the evidence thus obtained. ”

Finally, the Court addressed the question of the alleged presence of unauthorised persons during the description. The violation, actual or feared, of trade secrets of the respondent is, in fact, one of the most frequently discussed questions in description proceedings. This is probably the most interesting part of the ruling, which, in other respects, does not significantly depart from the case law of Italian IP courts in similar cases.

The Court did acknowledge that the parties were not allowed to participate through their representatives in the description, and thus the ex parte order had indeed been contravened; but it found that this was not a breach such as to call for a revocation of the order or to render the evidence acquired thereof unusable.

Such a severe consequence, the Court stated, would be determined only by the breach of rules protecting constitutional values, and the involvement of unauthorised persons in the description, by itself, did not constitute a breach of this kind. On the other hand, in the Court’s opinion, any existing trade secrets would be effectively protected by the provisions punishing the actual unauthorised use of confidential information, while no penalisation, even of a procedural nature, could be applied to the mere attendance of unauthorised persons at the description.

The Court found that the above violation was not a sufficient reason to seal the evidence until the trial, pointing out that such limitation would make it impossible for the applicant to assess the outcome of the description in view of instituting proceedings on the merits. Instead, it considered it sufficient to enjoin the making of copies of the description file and the reproduction of its contents within the merits proceedings until the presiding judge entered it into evidence, and to remind the parties of the confidentiality obligation with respect to the information acquired therein incumbent on the parties, their attorneys and consultants, and anyone who had taken part in the proceedings.

All in all, it seems safe to say that the Milan Court’s order as described here sets a favourable precedent for the use of the description in the field of IP rights, and therefore, ultimately, a favourable precedent for rights-holders.