The lawyers of Lexsential’s IP team boast many years of experience in the management of patent litigation, also internationally. The Firm assists clients in procedures of evidence preservation (descrizione), in preliminary proceedings and cases on the merits relating to the infringement and validity of Italian, European and unitary patents. Lawyers offer assistance not only before national judicial authorities, but also before the EU Court and the Unified Patent Court.

The Firm supports patent attorneys on legal issues in proceedings before the Board of Appeal of the Italian Patent Office and the European Patent Office (EPO). We are equipped to support clients in matters that may be referred to the EUIPO with regard to Standard Essential Patents (SEPs) and Supplementary Protection Certificates (SPCs). Our IP professionals have a profound knowledge of the management of declaratory judgement cases concerning all types of IP rights.

The firm’s experience extends also to the dialogue and cooperation with the customs to establish, when appropriate, customs surveillance regimes to combat counterfeiting and interact in the most effective way with the authorities in charge, to manage the procedure resulting from the discovery of suspicious goods.

Our lawyers draft and negotiate R&D contracts, assignment of IP rights and licensing agreements, support clients in strategic decisions related to the creation and protection of patent portfolios and their enhancement and protection and assist clients, together with patent attorneys, in drafting the freedom to operate analysis.

The track record of the IP team covers lawsuits and advice related to mechanical, chemical, pharmaceutical patents, including those on medical devices and veterinary drugs and devices, electronic and telecommunications patents, patents for the metallurgy and automotive business, patents concerning industrial plants (such as packaging lines, industrial cooking lines, automated quality control systems, material recycling plants, 3D printing systems and prototyping, etc.), robotics and vending machines, textiles and clothing, fashion, construction and agriculture.

The IP Team deals with disputes regarding the illegal imitation of products, packaging, formats, platforms, with disputes relating to slander, as well as disputes relating to all cases of professional misconduct such as, by way of example, those of illegitimate spin-off activities.

The Firm pays particular attention to violations of advertisinglaw and misleading communications, transfer of employees, theft of confidential company information, parasitic competition and slavish imitation. The Firm’s experience concerns disputes in all the different types of unfair competition acts. We often assist clients in the delicate phase of research and evaluation of the evidentiary material, which is essential in order to demonstrate the existence of the right itself and of its violation.

Among the various disputes that the IP Team lawyers have managed, we can list, for instance: cases of misappropriation of commercial and/or technical confidential information, also as a result of employees spin-offs, imitation of collections of furniture and accessories, of clothing, shoes and accessories, jewellery, perfumes, food products and their respective packaging, slavish imitation of automotive components, imitation concerning the activity of social media influencers misleading advertising and comparative advertising in different sectors, often in the medical device sector, unfair competition consisting in the imitation of technical drawings and theft of confidential information in the industrial, chemical, pharmaceutical and textile sectors, the misleading information in the presentation of one’s own products, the imitation of other people’s formats, parasitic unfair competition consisting in the offering of the range of copycat products and initiatives, employees poaching.

The Firm assists clients in litigation concerning designations of origin and geographical indications, disputes involving consortia or associations for the protection of such rights, especially in the alcoholic beverage and food sectors. In particular, the lawyers of the Firm’s IP Team have successfully dealt with numerous lawsuits before the Italian courts for the protection of geographical indications recognised at European or Italian level.

Artificial intelligence (AI) and emerging technologies (IoT, Blockchain, robotics, NFTs and cryptocurrencies), are redefining the boundaries of human activities with an inevitable and significant impact on the legal world.

For this reason, the Firm has dedicated a working group to the in-depth study of legal issues and to the understanding of the complex technical and ethical dynamics underlying each of these technological applications.

It is crucial to anticipate customer needs and provide tailor-made solutions to problems that have already arisen or are in the process of being defined, in being numerous and multifaceted, largely and closely related to the issue of intellectual property, personal data security and civil liability.

In this area, the Firm guides several innovative start-ups and is constantly committed to ensuring compliance with the current laws and to supporting clients in facing future challenges in the legal and compliance fields.

The Firm also uses AI systems to improve the efficiency and quality of services provided to clients, emphasising innovation and growth, also in the exercise of the profession, in a sustainable and responsible way.

The IP Team assists clients in the protection of distinctive signs, registered and unregistered trademarks and defends clients against abuse of these rights.

The protection extends to domain names, the trade name, the company name and unregistered trademarks, if protected.

Actions for protection can be filed before the Italian and European judicial and administrative authorities, such as:
- Specialised Business Divisionsof the first instance Courts, Courts of Appeal and Supreme Court;
- Italian Trademark office and Board of Appeals (Commissione dei Ricorsi);
- EUIPO, General Court of the European Union and Court of Justice of the EU;
- The infringement, cancellation and revocation disputes in which actions are simultaneously pending before national and European authorities, are very complex and require careful coordination. The IP Team’s experience allows the integrated management of all the different aspects of litigation.

The Team often deals with issues relating to online counterfeiting, customs protection of the brand (through a customs surveillance strategy on Italian or EU-wide territory), parallel imports, exhaustion of rights, and selective distribution.

Our support provided to clients concerns also:
- the procedure for the recognition of their titles, such as historical trademarks of national interest and well-known or famous trademarks on the Italian and European markets;
- the drafting and negotiation of licensing, co-branding, sponsorship and coexistence agreements;
- support for the clients during negotiations of agreements concerning sale or purchase of trademarks and of settlement agreement to prevent disputes relating to the use of distinctive signs on the market.

The IP Team offers assistance to clients in strategic decisions relating to investments in activities in which the brand is an important asset, as well as in activities aimed at choosing the brand and identifying strategies for the protection and enhancement of the brand.

The Team’s track record concerns litigation and assistance relating to trademarks with particular relevance in the fashion and clothing, pharmaceutical, medical and cosmetic, chemical, food and beverage, furniture and design, green building, sports, digital products and software, toys, publishing, media and social networks, automotive, GDO, HoReCa and packaging.

The utility model is a type of property protected in Italy and in a few other countries, whose protection requirements are less stringent than those of patents for inventions.

Protection makes it possible to obtain the right, despite the lack of the inventive step requirement which is essential to obtain a patent for invention.

The IP Team assists clients in disputes relating to the validity and infringement of utility models filed or obtained as a result of the conversion of a patent for an invention.

The track record concerns, for example, furniture elements, household appliances, components of industrial machines, small devices and tools.

The Firm’s clients are assisted in the protection of design rights against infringers and defended against abuses of this type of intellectual property rights before the Italian Courts and administrative authorities and European authorities (EUIPO, General Court of the European Union and Court of Justice of the EU).

These disputes, if related to European Union designs, are often filed simultaneously before national and European authorities and require skilful coordination, given the different jurisdiction and competence for cases of infringement and invalidity of rights. Under certain conditions, the design is protected even if it is not registered.

The IP Team’s track record includes litigation in fields such as furniture, fashion, textiles and accessories, footwear, leather goods, watches and jewellery, luggage, household furnishings, food and beverage containers, pet care products, smart devices, toys, household goods and consumer goods in general.

The Firm deals with all issues relating to fair advertising practices and marketing communications, which are often related to violations of intellectual property rights.

We provide clients with advice and represent them in litigation (not only before the judicial authorities, but also before the IAP Istituto dell’Autodisciplina Pubblicitaria), especially in disputes concerning misleading advertising, comparative advertising and unfair competition relating to advertising.

The Firm’s experience covers numerous cases of advertising of products or services offered on the market, often in the pharmaceutical and medical device sectors as well as in the food, beverage and large-scale distribution sectors.

The Firm assists clients in litigations relating to the protection of trade secrets – which is an IP right according to articles 98 and 99 of the Italian Intellectual Property Code law - and of confidential information which is protected pursuant to the article 2598 of the Italian Civil Code.

These disputes are complex because one must first correctly identify trade secrets and confidential information within its own company and gather evidence not only of its existence but also of the measures taken to preserve their confidential nature, in order to be protectable under Italian law. In addition, litigation in such cases generally requires evidence preservation of trade secrets misappropriation by a competitor, by former business partners, or former employees, sometimes in cases of spin-offs.

Apart from assistance in litigation, our lawyers draft internal regulations, contractual provisions and the documents necessary to introduce best practices in the company, aimed at identifying, protecting and preserving trade secrets and confidential information, which is often an important intangible asset of the company. We help clients in the implementation of policies and in the training of personnel, with the aim of better protecting trade secrets and confidential information. We draw up confidentiality and cooperation agreements for purposes of R&D cooperation that involves sharing of trade secrets or confidential information, and we assist clients in extraordinary transactions involving the assignment of trade secrets and know how.

Our track records concern, among other things, litigation and advice relating to the protection of trade secrets in the field of commercial communication, industrial machinery, food distribution, packaging lines for the food industry, plants for the steel industry and commercial facilities for the provision of services.

The Firm deals with litigation concerning databases and software, applicable to both machines and plants in the industrial and commercial sectors, protected by patent and by copyright.

The IP Team has gained significant experience in handling preliminary injunction proceedings, aimed at preserving evidence of infringement and obtaining preliminary injunction, and in handling case on the merits aimed at obtaining the final injunction and compensation for damages, with the support of IT experts.

Our IP professionals boast significant experience in the field of copyright and regularly support clients in the ‘creative industry’ in all its sectors, mainly including music, classical and light, live and recorded (to name a few: acquisitions of companies, of publishing and record companies’ editorial catalogues, music publishing contracts, sub-publishing and licensing, exclusivity agreements, advertising and cinematographic synchronisation, artistic contracts and artistic production contracts, managerial contracts, theatrical productions and for the production of live performances, collective management of copyright and related rights, plagiarism/counterfeiting and unfair competition, protection of the image and personality of the author and the performing artist), literary publishing (acquisition of companies and editorial catalogues, contracts for literary publishing, sub-publishing and licensing, exclusive contracts, contracts for the production of translations and film derivations, plagiarism/counterfeiting and unfair competition, protection of the image and personality of the author), protection of works of sculpture, painting and other figurative arts (including, inter alia, contractual relationships for the sale of works and exhibition in museums and art galleries), multimedia installations, photography, works of architecture and urban design, archives, collections and - more generally - public and private cultural heritage, theatrical, radio, television and cinematographic works, formats, board games, video games, computer programmes (software) and databases. These are all matters that are now strongly questioned by AI and the challenges (and opportunities) that this entails, both in terms of control of AI learning and transparency on the use of creative content, and in terms of the protectability of the resulting output and the effects that the production of AI entails on the creative content market.