Italy: An Intellectual Property Overview

Navigating Global Patent Litigation: The UPC Milan Local Division Emerges as a Strategic Forum for Service of Process and Applications for Urgent Relief

Milan’s role in the UPC system

Since the launch of the Unified Patent Court (UPC), the Milan Local Division has rapidly established itself as a sophisticated and active forum for high-stakes intellectual property disputes. Recent orders from the Division demonstrate a clear trend: a preference for the effectiveness of judicial protection over procedural formalisms, ensuring cases proceed efficiently and in a manner that is fair to all litigants. For patent holders, Milan is emerging as a strategic hub, particularly in cases involving the cross-border service of process and urgent evidence preservation measures.

Overcoming obstacles in the international service of process

A primary challenge for patent owners in the globalised economy is the service of judicial documents on defendants based outside the EU, and particularly in countries that have ratified the 1965 Hague Convention on Service Abroad but not allowed alternative means of service as per Article 10. Recent rulings by the Milan Local Division indicate a commitment to ensuring procedural efficiency against hurdles that otherwise cause significant delays in the administration of justice.

Most notably, in Cardo Systems Ltd. v Shenzhen Asmax Infinite Technology Co., Ltd. (UPC_CFI_766/2024, Order of 12 December 2025), the Milan Local Division has reaffirmed the UPC’s procedural autonomy, ruling that its service provisions operate independently of national laws to prevent undue delays. By integrating Article 15(2) of the Hague Convention into Rule 275.2 RoP, the court ensures that “reasonable steps” suffice to move litigation forward. Crucially, the Milan Local Division rejected the hypothesis of refusal of service based on political censorship or minor administrative formalities, asserting that foreign authorities cannot veto the content of legal pleadings. This pragmatic approach provides a means to validate service of process despite bureaucratic resistance, securing procedural efficiency against extra-EU subjects that otherwise may avoid being called before the UPC.

Evidence preservation

The Local Division Milan was the first Division of the UPC to hear an application for the preservation of evidence (saisie-contrefaçon) and has since become a reference point for such remedies under the UPC framework. The Division’s approach demonstrates a careful balance between the applicant's right to evidence with the defendant's right to defence.

Two years after the first such application was filed before the Milan Division, in Prinoth S.p.a. v Xelom S.r.l. (UPC CFI 127/2025, Order of 27 October 2025), the court reaffirmed that the decision to grant measures without hearing the defendant (inaudita altera parte) must be conducted from an ex ante perspective. Rather than requiring the applicant to show absolute certainty that the material for which preservation is requested might be altered or deleted if the defendant were notified of the measures in advance, a “concrete statistical possibility” is sufficient.

Further, the burden of proof for obtaining these measures is not the full proof of infringement required for a final judgment. Instead, as noted in 3V Sigma S.p.A. v AGA S.r.l. and ACEF S.r.l. (UPC CFI 342/2025, Order of 5 December 2025), the applicant must present “reasonably accessible” evidence that makes the claim of infringement credible, plausible and logically consistent at the preliminary stage.

Protection of confidentiality and trade secrets

As the volume of technical documentation that has been seized or introduced into cases before the UPC increases, so does the need to protect sensitive industrial know-how. The Milan Local Division has demonstrated that it employs a balanced confidentiality regime.

While the court seeks to limit access to sensitive information, it adheres to Rule 262 A.6 RoP, which requires the inclusion of at least one natural person from each party. In the confidentiality proceedings of 3V Sigma S.p.A. v ACEF S.r.l. (UPC CFI 342/2025, Order of 23 September 2025), the court granted access to a designated natural person from the claimant over the objection of the defendant, emphasising that such access is vital for an effective remedy and a fair trial.

In fact, the court remains cautious regarding “external eyes only” regimes. In Telefonaktiebolaget LM Ericsson v Asustek Computer Inc (UPC CFI 319/2024, Order of 20 June 2025), the court held that restricting access solely to external counsel is exceptional and requires that a “strict burden of proof” be met, regarding a specific risk of disclosure or anti-competitive abuse.

Settlements and court fees

The Milanese system actively encourages the early resolution of disputes. The UPC Rules of Procedure provide a significant financial incentive: if an action is settled before the closure of the written procedure, parties can obtain a 60% reimbursement of court fees. This has been seen in cases like Hypertherm Inc. v Tec.Mo. s.r.l. (UPC CFI 226/2025, Order of 7 October 2025).

However, as clarified in Edwards Lifesciences v Sintec and Value Med (UPC_CFI_202/2025), the reimbursement provided for under Rule 370 RoP applies exclusively to actions on the merits and not to applications for provisional measures, given that the court fees for the latter are already significantly reduced.

Conclusion

The case law emerging from the Milan Local Division reflects a deep understanding of the needs of global businesses. By prioritising procedural efficiency – particularly regarding international service and the preservation of volatile evidence – Milan is positioning itself as a central pillar of the new European patent landscape.