Top patent litigation firms in Italy

The patent teams at Italy’s law firms are led by experienced litigators, most of whom are based in Milan. After many staff changes over the past two years, the important first-instance IP court in the capital is undergoing a shake-up. Consequently, some proceedings on the merits are taking longer, while PI proceedings remain fast.

Ripple effect

Nevertheless, Milan remains an important location for pharma litigation. The most significant judgment of the year is a perfect illustration of this. In the summer, the Italian Supreme Court was the first court in Europe to comprehensively interpret the Bolar exemption in the dispute between Boehringer Ingelheim and Sicor and the latter’s parent company Teva.

This decision has a major impact on the relationship between originators and generic drug companies. It regulates more precisely the conditions under which generics companies may develop new drugs during ongoing patent protection. For manufacturers looking to launch drugs on the market as soon as protection expires, this is paramount.

Not only does the case affect other European national courts and the Unified Patent Court, it also sheds light on the various law firms present on the Italian market.

Strong national boutiques

IP boutique Trevisan & Cuonzo assisted Boehringer Ingelheim throughout all phases of the case. Lead counsel was Luca Pellicciari, who first worked on the case as an associate and then became partner in 2021. The team also included Donatella Capelli and Chiara Centola. Name partner Luca Trevisan handled the final pleadings before the Supreme Court.

When talking to international law firms about the Italian parts of their pan-European cases, or national Italian firms about the opponents in their most important cases, it is the name Trevisan & Cuonzo that comes up most often.

Luca Pellicciari

This law firm has been on the market for 30 years. The two founding partners Luca Trevisan and Gabriel Cuonzo are active in patent disputes along with partners Luca Pellicciari, Daniela Ampollini, Vittorio Cerulli Irelli and Donatella Capelli.

For the launch of the UPC, the firm has taken an unusually big step for the Italian market and joined forces with the patent attorney firm TCBM. They have not merged to form a single integrated law firm but cooperate as sister law firms. Trevisan thus has patent attorneys experienced in EPO oppositions on its side for the UPC.

Trusted advocate in Italy

In addition to representing Boehringer, the firm has a strong overall position for life sciences clients. For example, it is representing BMS against Teva in the pan-European dispute over apixaban. It is also acting for Novartis in the pan-European battle with Mylan over fingolimod. This spring, the Italian appeals court upheld the PI for client Novartis.

Daniela Ampollini

Trevisan & Cuonzo is often one of the first ports of call when litigation concerning other technological fields is initiated in Italy. For example, the team represented Intel against R2 until the case was settled in September 2024.

Tech group Samsung also trusted the firm in the dispute with Hop Mobile over the Italian patent IT 1 327 335, which protects a dual sim technology. The Supreme Court of Cassation handed down its decision in this case in November 2023.

However, Trevisan & Cuonzo is not the only big name here. The local offices of some major law firms are also highly active and renowned in the Italian market, not least Bird & Bird.

The Italian team has an excellent position as part of the law firm’s network, which has a strong presence at all UPC locations throughout Europe. Partner Giovanni Galimberti has helped build up Bird & Bird’s Italian practice over the past 21 years. The patent litigation team now comprises 23 staff, including patent attorneys. The integrated cooperation of patent attorneys and lawyers within the same firm is rarer in Italy than, for example, in Germany.

Giovanni Galimberti

Role model Bird & Bird

Bird & Bird Italy is active in numerous pan-European proceedings alongside its teams in other European countries, for example for core clients such as Teva. A highlight is the extensive series of proceedings for Edwards against Meril, with two proceedings and three PI proceedings pending in Italy.

Overall, the practice is strong in life sciences. It represents Fisher & Paykel Healthcare in a dispute with Euromed, for example. The team is also representing Nokia in telecommunications proceedings against Assia. Furthermore, it is active in some extensive proceedings concerning other technologies, such as for Volvo in a dispute with KFT and for Mammut against Ober Alp.

Despite its close relationship with Teva, Bird & Bird did not play a role in the Supreme Court case against Boehringer. Competitor Simmons & Simmons represented Teva and Sicor in all instances. Stefania Bergia already handled the case as a partner at Vanzetti e Associati before she joined Simmons & Simmons in 2018.

Stefania Bergia

Bergia began her career in a traditional Italian IP boutique run by professors. Although larger boutiques and international law firms now dominate the Italian market, Bergia herself personifies the Italian specialty of combining academic work and teaching with active patent litigation.

Although active teaching at university is also a matter of course for some renowned litigators in France, lawyers in Germany are much less likely to do this, partly because specialising in IP is less pronounced at German universities.

With two partners and several experienced associates, the Italian Simmons & Simmons team is not the largest in the Italian market, but it is closely integrated into the firm’s life sciences practice and international network. Core clients include the German pharmaceutical group Bayer, which the firm is currently representing in the company’s most important and extensive pan-European proceedings concerning the blockbuster drug Xarelto.

European players

Hogan Lovells has also built up a respected team in Milan around the two partners Giovanni Ghirardi and Luigi Mansani. The firm has a very strong team in pan-European patent litigation, which is involved in the extensive Meril vs Edwards case. Hogan Lovells is also trusted by other major life sciences clients. For example, the team is conducting proceedings for BMS against Sandoz regarding an originator pharmaceutical product for treating leukaemia.

Giovanni Ghirardi

Another highlight includes the defence of Novamont and Mater-Biotech against the Japanese patent holder Toray concerning biodegradable chemical base materials and plastics. The proceedings on the merits, which followed a search order decision, are currently pending before the Court of Venice.

One major international law firm tackling the Italian market is DLA Piper. Gualtiero Dragotti has been building up the local patent litigation team for 13 years. He came to DLA Piper from a traditional IP boutique. The practice’s core clients include Energy Dome, a scale-up operating company in energy storage, Peri Group subsidiaries, a German multinational manufacturer and supplier of formwork and scaffolding systems, and Waterjet.

Traditional Italian boutiques

IP Law Galli and Sena & Partners are both traditional Italian IP boutiques whose name partners and other staff are also involved in the academic sector. The latter won for Piaggio against Peugeot at the Supreme Court in the summer. Patent holder Piaggio asserted a patent protecting a technology to control the system that allows a three-wheel vehicle to tilt sideways like a traditional motorcycle. The court awarded damages of over €1 million.

Giovanni Guglielmetti

The law firm conducted this case together with the patent litigation team led by Giovanni Guglielmetti from the large Italian law firm Bonelli Erede. Bonelli Erede is also active in one of the few ongoing telecommunications disputes in Italy, namely it is defending Fastweb against two infringement suits brought by ASSIA concerning SEPs for DSL lines.

Bonelli Erede is also acting for Danieli, a world-leading Italian steel manufacturer, against competitor Arvedi. This litigation consists of two strands and is playing out in the courts of Milan and Trieste. Furthermore, the team represented Philip Morris in the high-stakes patent infringement lawsuit brought by BAT until the parties settled in spring.

Jacobacci Avvocati is a Franco-Italian law firm. It was founded in 1996 by Fabrizio Jaccobacci, a descendant of the founder of the patent attorney firm of the same name. Both are renowned players in the market, but are not affiliated under company law, even though they maintain offices in the same buildings. Jacobacci Avvocati is known for representing well-known life sciences clients.

Representing SMEs

Similarly to some Düsseldorf litigation boutiques, a number of renowned litigators around Alberto Tornato founded a law firm 15 years ago, which then merged with Prado ten years later. Now under the brand Tornato Prado, the firm enjoys renown for its good ties to German and Italian SMEs.

Alberto Tornato

Recently, the firm represented Peugeot in the Supreme Court battle with Piaggio. Its clients also include Sabatier in a dispute with OCM over plastic packaging, which the court in Venice will hear this month. In addition, the law firm expects a decision soon in a case for Seiko Epson against Alhaink concerning printer cartridges.

LGV’s team led by Tankred Thiem also has a high profile for representing German SMEs. A highlight was the now-settled case for R2 Semiconductor against Intel.

The firm is also representing Gioelli di Valenza, for example, in a dispute with Crieri over a patent for a coating process in jewelry manufacturing.

Other teams that regularly appear in pharmaceutical and other patent litigation include the patent litigation practice at Gianni & Origoni (GOP) led by Francesca Fosson, and a team from Herbert Smith Freehills led by Laura Orlando.