Patents—Italy—Q&A guide

The following IP practice note provides comprehensive and up to date legal information covering:

  • Patents—Italy—Q&A guide
  • 1. 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?
  • 2. What is the format of a patent infringement trial?
  • 3. What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?
  • 4. 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?
  • 5. 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?
  • 6. 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?
  • 7. To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?
  • 8. To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?
  • 9. What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?
  • More...

Patents—Italy—Q&A guide

This Practice Note contains a jurisdiction-specific Q&A guide to patents in Italy published as part of the Lexology Getting the Deal Through series by Law Business Research (published: February 2021).

Authors: Studio Legale Jacobacci & Associati—Fabrizio Jacobacci

1. 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. Patent enforcement lawsuits must be brought before the specialised IP division operating in 21 out of 136 tribunals.

2. 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

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