Patent Litigation in Practice Series: Spotlight on Italy: Proceedings for preserving evidence

In Italy there are peculiar proceedings, called "descrizione", enabling intellectual property owners to collect evidence of the alleged infringement (also) before bringing the main infringement proceedings.

Requirements

To obtain the descrizione, the patentee must prove:

1. The prima facie validity and the plausible infringement of the enforced patent ("fumus boni iuris"); and
   
2. The urgency of the measure sought ("periculum in mora”).

These requirements are assessed less strictly than in preliminary injunction proceedings.

Content of the order

By granting the descrizione, the Court allows a bailiff and generally a Court Technical Expert (i.e. a patent attorney, who guarantees expertise, impartiality and independence, appointed by the Court) and patentee’s legal counsel to access the premises in which the alleged infringement takes place (i.e. the registered office, warehouses, branch offices or  any other place of the defendant or of third parties where the infringing product is used/stored).

The Court may order the bailiff to:

• collect documents (technical and commercial, including digital) relating to the alleged infringement and, where appropriate, the extent of the alleged infringement in order to identify the distribution chain and the damage suffered;
  
• take samples and photographs of the allegedly infringing product/process;

The bailiff, with the assistance of the Court Technical Expert, drafts a written report describing the execution of the measures and the evidence collected, which is filed in Court.

To protect confidential information of the alleged infringer, the Court may order that the evidence be kept in a sealed envelope to be filed in Court and also that the access to it be temporary prohibited until a subsequent order of the Court.

Ex parte grant 

The descrizione may be granted ex parte, without the alleged infringer having been heard, particularly where there is a risk that evidence may be destroyed or no longer be available if the alleged infringer is aware of the proceedings. 

In this case, the Court schedules a hearing with the defendant within 15 days from the filing of the decision in order to discuss about the confirmation / modification / revocation of the measure granted ex parte. 

Mandatory main proceedings

The patentee must initiate the main infringement proceedings within the deadline set by the judge or within a period not exceeding 31 calendar days or 20 working days, whichever is the longer, from the date of the order granting the descrizione. Failure to do so invalidates the order and the evidence gathered.

Key takeaways

Descrizione can be an indispensable tool for patentees in cases where evidence of infringement is difficult to obtain. For example, in the case of a process patent, it can be impossible to gather evidence of infringement without access to the other party's manufacturing site.

Those concerned about being suspected of infringement should also keep this tool in mind. Indeed it is crucial also for them to be prepared and know how to correctly deal with the execution of descrizione in their own premises. 

Similar measures can also be granted by the French and Belgian courts and by the Unified Patent Court.