Patent enforcement proceedings

Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Civil courts have jurisdiction to hear patent infringement claims and offer the most effective approach to enforce patents. Occasionally, patents are enforced in criminal courts by filing a complaint with the public prosecutor. Customs authorities may also enforce patents following their registration in accordance with EU Regulation No. 608/2013 by detaining goods suspected of infringement. Patent enforcement lawsuits must be brought before the specialised IP division operating in 21 out of 136 tribunals.

Trial format and timing

What is the format of a patent infringement trial?

Patent enforcement proceedings essentially use a written procedure. The matter is presented by way of written submissions with limited opportunities to make oral submissions to the judge. The proceedings can be divided in four distinct phases.

The first phase starts with the service of the summons, followed by the filing of the answer, including any counterclaim and third-party notice, and the case management hearing, when the judge decides any preliminary plea, such as jurisdiction, venue and standing, and sets the dates for the completion of the gathering of evidence phase.

The second phase consists of the filing of documentary evidence and requests to hear witnesses of to take other evidence by way of disclosure of information from the other party. Once all evidence is in front of the judge, the proceedings will move to the third phase. The judge will appoint an expert of his or her choice – usually an European Patent attorney with a background in the patent technology – to assist the judge in understanding the underlying technology and in deciding the questions of the patent’s infringement and validity.

As soon as the court-appointed expert submits his or her report, the case will move to the fourth and final phase, where each party makes its final written submissions and rebuttal. Only at the end of this phase, there is an oral hearing where each party may answer questions asked by the court and focus on the main issue of the dispute in a short oral presentation.

Given the written nature of the procedure, documentary evidence has a prominent role. However, written declarations cannot be used to prove facts, but only to present opinions (such as those of the experts). When a fact can only be proved by way of testimony, this must be given orally before the judge. There is very little room for cross-examination. The list of questions concerning the examination of the witness are submitted in advance to the judge who decides which question is relevant and therefore admissible. The cross-examination is limited to obtaining details or clarifications on the answers already given.

Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

The burden of proof rests on the party making the claim. The patentee must prove the facts supporting the claim for infringement and the alleged infringer the facts supporting the claim for invalidity of the patent. The judge decides the case based on the evidence presented by the parties that must be assessed in accordance with Rules of Civil Procedure.

Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The patent owner and exclusive and non-exclusive licensees have standing to sue for infringement, unless the licence agreement states otherwise. The party accused of infringement whether in writing or orally has standing to sue for a declaration of non-infringement. The accusation does not need to be detailed, it is sufficient that it identifies the patent allegedly infringed – even indirectly. There is still an open question – and contradictory judgments – as to whether the party that contacts a patent owner to inform the owner of his or her intention to offer on the market a product that in the party’s opinion does not infringe, and requesting a confirmation that no action shall be taken has standing to sue in the event no answer is given.

Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Any party inducing or contributing to the patent infringement committed by another is liable for patent infringement. However, there is a distinction between inducing infringement and contributing to infringement. While the party inducing to infringement is generally liable, the party contributing to infringement is liable if two conditions are met, namely that the component supplied is essential for working the patent invention and that the supplier is aware, or could have been aware by using average diligence, that the component infringes the patent.

Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

The patent owner can sue all parties involved in the infringement of the same patent or patents together on condition that they concur in the same infringement. For example, the producer, distributor and retailer of the same infringing product can be sued together even if they are unrelated businesses and their place of business is located in the jurisdiction of separate courts. On the contrary, the producer of an alleged infringing product and the distributor of a different alleged infringing product cannot be generally sued together even if they infringe the same patent and are related businesses.

Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place outside the jurisdiction can support a charge for patent infringement only if such activity is capable of creating a profit in the jurisdiction and that profit is an expected or predictable consequence of such activity. For example, a party producing and selling a product in a jurisdiction where there is no patent protection becomes liable for infringement of a patent in another jurisdiction if it promotes sales in that jurisdiction or if it supplies the product to a party that will predictably export the product in that jurisdiction.

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

Article 52 of the IP Code determines the scope of protection granted to patents and specifies that one must take into account any features of the alleged infringing product (or process) that are equivalent to a feature of the claims. In order to determine whether a certain feature of the product or process, albeit non-identical, is equivalent, the courts take two distinct approaches. They apply either the triple test copied from US law (assessing function, means and results) or the obviousness test. The obviousness test consists of comparing the feature of the product or process accused of infringement with that of the patent claim and if the substitution appears obvious to the skilled person, then there is infringement by equivalents.

Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

The options available to force the opponent or a third party to produce evidence during litigation are limited. As a general rule, during the litigation, each party is responsible for producing evidence that support its case and the possibility to force opponents or third parties to produce evidence is limited to those cases where the evidence under the control or possession of the other party is necessary for the decision and cannot be obtained otherwise. The request must clearly identify each document or thing to be produced and any request for the production of categories of documents or things is inadmissible. In addition, the patent owner may also seek to gather evidence before filing the infringement lawsuit by applying to the court for an order for description. The order enables the applicant to obtain access – usually without notice – to the premises of the alleged infringer and make copies of documents or things (which must be described, hence the use of the term description). The enforcement of this order enables the applicant to obtain access to categories of documents and things, and it is often used in disputes relating to patents covering processes, as it may be otherwise difficult to obtain the necessary evidence to prove infringement.

Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The overall duration of a lawsuit for patent infringement, which always includes a counterclaim for invalidity of the asserted patents, is about four years. The fastest courts will decide the case in about three years, the slowest in five.

Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The Italian procedure is mainly a written one without distinction between the pre-trial and trial phases of the lawsuit. The global cost depends on the number of patents involved and the area of technology. Assuming only one patent is involved, costs vary from €100,000 for a relatively simple mechanical case to €800,000 for a complex pharmaceutical or telecommunications case. Contingency fees arrangements are permitted, but uncommon for two reasons: Italian law does not contemplate the grant of damages other than compensatory damages; and because the prevailing party is entitled to recover its legal fees. Although the legal fees awarded are in the area of 30 per cent to 50 per cent of the actual cost, this has further discouraged the popularity of contingency fees arrangements.

Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

The aggrieved party may file an appeal within 30 days with the appellate court having territorial jurisdiction over the tribunal that issued the judgment. The appeal stage is a full review of the first instance proceedings (both facts and law) with, however, limited possibility to produce new evidence. In particular, during the appeal, the parties can produce only the evidence that it was not possible to produce during the first instance proceedings for reasons beyond the control of the party producing it.

Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

Patent enforcement can expose the patent owner – or the licensee – to liability for breach of competition law, if the enforcement is based on a patent that is known to the owner to be invalid. In a landmark decision issued by the Supreme Administrative Court (Council of State 12 February 2014, no. 693), the Court held that even the acquisition – not just the exercise – of a patent in the absence of the requisites of entitlement may amount to an abuse. If the patent owner enjoys a dominant position, the patent abuse may result in an abuse of a dominant position under article 102 of the Treaty on the Functioning of the European Union.

Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Alternative dispute resolution methods, such as mediation and arbitration, are available but rarely relied upon in patent disputes

Law stated date

Correct on

Give the date on which the information above is accurate.

12 March 2021.