Giulio Enrico Sironi
Studio Legale Vanzetti e Associati, Partner, Milan, Italy
It may at times be noted by those who work in the patent field that a perception exists, above all outside Italy, that Italian legislation and jurisprudential praxis in this matter are unsatisfactory or, at any rate, not completely sound. In actual fact, this perception is not (or at least, is no longer) justified. The aim of this article is to demonstrate, first of all by giving an overview of new legislation and then by examining recent case law, that Italy, too, may be considered a competent jurisdiction for patent cases and that present trends are extremely encouraging.
Over the last few years a series of new laws have been introduced relating to the IP sector and specifically the patent sector. These laws have the dual purpose of strengthening measures to protect IP rights and ensuring that IP disputes are handled by Courts which are actually competent, in the sense that they have a specialist knowledge of the matter. The first of these laws was Legislative Decree 27 June 2003, no. 168, whereby Specialized Divisions exclusively competent for all IP cases were set up at twelve Courts and twelve Courts of Appeal. Since 2003, therefore, all patent disputes have been brought before these Divisions composed of judges who have, as the law provides, “specific skills” in the area. However, even before the institution of these Divisions, a de facto specialization had developed at the Courts of the cities in which IP cases were frequently held (Milan, Rome, Turin, Venice, Bologna and Naples), in the sense that it was common practice to always assign such cases to a certain division, the judges of which had—or, at any rate, had acquired over time through working in that division— a good level of knowledge of the matter. However, this was a situation in which specialization was the result of a common practice and in which, above all, the possibility that the case would be handled by a specialist judge depended on whether or not the case could be brought before a certain Court, according to the normal rules of competence laid down in the Code of Civil Procedure (CCP). If, on the contrary, for reasons of competence, a case had to be brought before another court, a particularly complex patent dispute involving substantial sums could be decided by judges who had never before in their careers dealt with such an issue. In addition to eliminating this kind of risk, concentrating patent cases before the twelve Courts and Courts of Appeal (the concentration is, in fact, even greater given that the majority of patent cases are held before the Specialized Divisions of the Courts of the six above-mentioned cities), has led to a series of other advantages.
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