This article deals with IP cases and COVID-19 emergency in Italy and offers an introspective analysis into IP trials at the time of COVID-19

The Covid-19 emergency is changing the judiciary system, which is now facing one the biggest challenges in the last decades.

The introduction of social distancing rules has triggered a process of “modernization” of the judiciary activities. To that effect, new “digitalized” hearings and other alternative means (i.e. the filing of written notes with the Court a few days before the hrearing) have been introduced in place of physical hearings.

Indeed, with specific regard to civil and IP trials, article 83, para 7 lett. f) of the “Decreto Cura Italia” (D.L. n. 18/2020, converted into Law 24 April 2020, n. 27) establishes that “civil hearings which does not imply for the presence of subjects other than the representatives, the parties and the auxiliaries of the Judge, even if aimed at obtaining information from the public administration, may take place via remote connections […].”

If, after all, such measures have been necessary for the sake of the national judiciary system in such unprecedented public health crisis, something could be said about their effectiveness in practice and, most importantly, the protection of the parties fundamental rights and procedural principles.

The safeguard of the judiciary system’s cornerstones (i.e. the defense right, the principles of due process, contradictory and orality of trials, pursuant to articles 24 and 111 of the Italian Constitution) is one the most controversial issue in the celebration of remote hearings.

With the “Decreto Cura Italia” the Italian Government  has introduced important “safe harbors” to ensure the protection of the above fundamental rights, such as the communication to the parties of the day, time and method of connection before the hearing, as well as the control of the participants’ identity and further operations (i.e. the “screen-sharing” of documents, the free (art. 117 CPC) and formal interrogatory (art. 230 CPC) of the parties, the attempt of judicial settlement (art. 185 CPC), the absence of the parties etc.) carried out by Judge at hearing.

However, further issues may arise in relation to witness and expert witness’s testimony hearings, where the use of remote connection may misrepresent the assumption of the deposition, since the Judge does not have a complete visual (but only oral!) perception and control over the parties behind the screen.[1]

Nevertheless, from a textual interpretation of article 83 of the “Decreto Cura Italia” the Italian Governement has clearly excluded all preliminary actives via remote connections, since the physical presence of the Judge is still demanded in such circumstances.

IP trials are also involved in this revolutionary scenario, with the consequence that IP lawyers and professionals have readapted their old practices to these new judiciary procedures.

At the same time, the administrative authorities, such as the Italian Patent Office (UIBM), EPO (European Patent Office), EUIPO (European Union Intellectual Property Office) have suspended all the pending IP administrative procedures (including deadlines, trademark oppositions, oral hearings etc.) before their Office and also extended the validity of expiring IP rights.[2]

Moreover, consideration has also to be given to the peculiar nature, length, complexity of the case and, in some circumstances, urgent matters of IP cases: the “digitalization” of IP trials may have a great impact in terms of time and cost saving for the parties, since remote hearings may facilitate the presence of IP owners themselves and their legal representatives at trial, so helping reduce the overall duration of trials.

The Covid-19 health emergency has raised important “foods for thought” with respect to the efficiency of our traditional judiciary system and the possibility to use, where possible, remote hearings (as well as the exchange of written notes) in place of physical hearings also in the future.

If this newly adopted digitalization agenda should survive after the expiry of the Covid-19 crisis, this will help shorten the average duration of IP Court cases, provided that the fundamental rights of the parties and the due process principle should be guaranteed (not only potentially!).

There are clues that suggest that this emergency legislation might help improve also for the future the quality and efficiency of Italian judiciary system, but clearly a more in deep analysis of the “pros” and “cons” of trial digitalization will be possible only at the end of the crisis.

FEDERICO ZANARDI LANDI

[1] Pisanecchi, Udienze civili: i sistemi di videoconferenza ai tempi del Coronavirus, at https://www.quotidianogiuridico.it/documents/giuridico/2020/03/30/udienze-civili-i-sistemi-di-videoconferenza-ai-tempi-del-coronavirus Reale, Coronavirus: lo svolgimento da remoto delle udienze civili e penali, at https://www.quotidianogiuridico.it/documents/giuridico/2020/03/24/coronavirus-lo-svolgimento-da-remoto-delle-udienze-civili-e-penali; COVID-19: The remore Family Court at https://www.mishcon.com/news/covid-19-the-remote-family-court?utm_source=Twitter&utm_medium=news&utm_campaign=COVID-19%3A%20The%20remote%20Family%20Court.

[2] La proprietà intellettuale ai tempi del Coronavirus, at https://www.sagliettibianco.com/la-proprieta-intellettuale-ai-tempi-del-coronavirus/; Covid-19 – Procedimenti in materia di marchi, brevetti e design dinanzi ad Autorità Amministrative italiane e internazionali (UIBM, EPO, EUIPO, WIPO) – Aggiornamento Circolare 2-2020, at https://www.ghidini-associati.it/circolari/circolare-n9/.