Areas of practice

We support our clients across all areas of intellectual property.

• Patents
• Trademarks and designs
• Know-how and trade secrets
• Copyright
• Internet and domain names
• Advertising law

Patents

We offer specialist support in patent matters and handle a large volume of intellectual property litigation, both nationally and internationally. The firm is particularly renowned for its experience as a representative in Italy in multinational patent litigation and cross-border cases, primarily in the pharmaceutical, medical devices and high-tech sectors.

We are also active within the new framework of the Unified Patent Court (UPC), where we can assist clients both locally and before the central divisions in Paris and Milan.

Trademarks and designs

We assist leading trademark owners with highly complex and significant matters, representing them in Italian courts, including the Court of Cassation and the courts of the European Union.

In high-stakes litigation involving multiple jurisdictions, we act as Italian counsel for multinational companies, providing strategic support and comprehensive protection of their rights.

We also support our clients with matters relating to the protection, management and exploitation of designs, including litigation and governance services concerning industrial property rights.

Know-how and trade secrets

We help clients to safeguard their know-how and protect the confidential information that gives them a competitive advantage, preventing unauthorised use by third parties. At the same time, we provide specialised assistance in protecting, managing and safeguarding trade secrets.

Our support includes:

• identification and classification of confidential business information;
• drafting of internal policies and non-disclosure agreements;
• employee training to prevent unauthorised disclosure;
• assistance to clients in trade secret litigation.

Copyright

We offer comprehensive advice on all aspects of copyright law. This includes assessing the scope of protection for different types of works, conducting due diligence and defining licensing and protection strategies. Our support covers the entire cycle, including litigation, portfolio monitoring and copyright registration.

We also have solid expertise in drafting and negotiating commercial licences, joint development agreements, and co-ownership contracts.

Internet and domain names

We help clients protect their online rights and manage domain names, preventing abuse and disputes relating to intellectual property.

Advertising law

Our professionals support clients in the advertising sector by providing legal protection and representation.

At Jacobacci Avvocati, we handle every aspect of industrial and intellectual property rights, from contract drafting to pre-litigation and litigation. We have extensive experience in contract law and are experts in representing clients before national, foreign and EU courts, as well as administrative courts.

The firm also specialises in protecting personality rights, offering clients comprehensive, constantly updated protection.

Focus: IP Due Diligence

We are constantly engaged in IP due diligence to identify, assess and protect all aspects of intellectual property involved in corporate transactions, particularly mergers and acquisitions. This enables our clients to utilise the assets acquired or disposed of safely and effectively, in line with their business strategies and objectives.

Jacobacci Avvocati specialises in:

• analysing agreements between target companies and key personnel working in the areas of intellectual property and information technology
• verifying the existence, content and scope of agreements of assignments, licences, joint development agreements, IP sharing, etc. in order to assess validity, purpose, duration and limits on use of IP profiles by the acquirer
• assessing the likely effects of the transaction
• verifying the existence of any current and/or possible IP disputes, including status, estimate the likelihood of success and conducting a risk assessment of pending or threatened litigation
• providing an analysis of potential uses of IP assets
• managing critical issues relating to cross-border transactions
• providing competition and antitrust assessments
• advising on information technology matters, including software, websites and social media
• assessing the data security impacts of the operation
• evaluating possible transfers of personal data and how they will be implemented and managed.

Further, since IP Due Diligence requires a great deal of coordination with issues arising in the area of Data Protection / Privacy, Jacobacci Avvocati also offers:

• analysis of the impact of the transaction on data security
• opinions on Privacy considerations
• evaluations on Data Protection / privacy policy from both the perspective of the transferor and the transferee
• secure transfers of databases
• audits
• personal data management analysis.

• Ordinary litigation
• UPC litigation
• National arbitration
• International arbitration
• Mediation

Our professionals' extensive experience in domestic and international litigation, both in the courts and in arbitration, enables us to protect our clients' rights and interests across all the firm's areas of specialisation.

This expertise is complemented by ongoing support for companies involved in litigation abroad, made possible by the presence within the firm of professionals qualified to practise before foreign courts - particularly in the United Kingdom and the United States - and by established relationships with partner law firms in key foreign jurisdictions.

This structure allows us to understand the workings of foreign legal systems and provide clients with clear guidance on the structure and progress of their cases.

The establishment of the Unified Patent Court (UPC) is the most significant reform of the European patent system in fifty years. For businesses operating within the single market, understanding this new landscape is essential for protecting and maximising the value of their technological assets. It is not just a case of applying new rules; it requires a complete rethink of their protection strategy.

Our firm is here to help you turn this challenge into a competitive advantage.

What is the UPC?

The UPC is a specialised supranational court that will be operational from 1 June 2023 and has been established primarily to rule on the validity and infringement of unitary patents and European patents (where these are not subject to the transitional opt-out regime). Thanks to this system, a single judgment has immediate effect in all EU Member States that have acceded to the UPC Agreement (currently 17, including Italy, Germany, France, and the Netherlands), thereby avoiding the risk of potentially conflicting judgments across different jurisdictions and reducing costs compared to initiating parallel multinational litigation.

The structure

The UPC has a decentralised structure comprising:

• A Court of First Instance, which includes:
  • a Central Division, which is based in Paris with sections in Munich and Milan. This division primarily handles invalidity proceedings.
  • several Local or Regional Divisions, spread across various Member States (including the Milan-based Italian division), which primarily deal with infringement proceedings.
• The Court of Appeal, which is based in Luxembourg.

Actions That Can Be Brought

The UPC Regulation offers a wide range of legal instruments for the protection of industrial property.

1. Infringement actions: to prevent the unauthorised use of a patent or supplementary protection certificate throughout the UPC territory.
2. Revocation actions: to invalidate a patent or supplementary protection certificate through a single, centralised process.
3. Negative declaration actions: to obtain legal certainty that one’s own product or process does not infringe another party’s patent or supplementary protection certificate.
4. Interim measures: to obtain injunctions and seizures of products suspected of infringing a patent or supplementary protection certificate as a matter of urgency, provisionally halting the infringement throughout the UPC territory.
5. Evidence gathering tools: to obtain a description of products or processes manufactured in infringement of the asserted patent, as well as the relevant documentation. This includes taking samples and/or seizing goods suspected of infringement.

How we can provide support you

Thanks to our multidisciplinary and multilingual team, we act as a strategic partner, offering expert advice at every stage of litigation. We support our clients from the definition of the pre-litigation strategy to legal representation.

We have a strong presence at the key offices of the Central Division in Milan and Paris, and we have a well-established network of leading professionals across all countries that are party to the UPC Agreement.

We provide our clients with the expertise they need in the ever-changing fields of legislation and regulation.
We deal with new technologies and marketing authorisations for medicines and medical devices. We liaise with the relevant authorities and public sector professionals and represent clients before the administrative courts.

We support clients with regulatory issues that arise throughout the entire lifecycle of a pharmaceutical product, developing effective regulatory and procedural strategies to help them achieve their business objectives within an increasingly complex regulatory environment.

Jacobacci Avvocati has extensive experience in commercial law, operating across all the key areas of interest to businesses.
Our team supports clients both in the day-to-day management of their business - drafting legal opinions and contracts and providing support in negotiations - and in the development and implementation of growth strategies, whether commercial or relating to intellectual property, with solutions tailored to the specific needs of each client.

We also support clients in their collaborations with business partners, addressing commercial issues as well as aspects relating to industrial property.

Our advice includes drafting and negotiating business contracts in specialist areas such as:

• Manufacturing and distribution: supply contracts, contract work, licences and distribution.
• Research and development: agreements for the joint research and development of new technologies, paying particular attention to confidentiality, collaboration, and the sharing of industrial property rights.
• E-commerce: contracts for the publication of content and the provision of web services; collaboration agreements between businesses, search engines, providers, and distribution platforms.
• Tourism law: contracts for package holidays; drafting documentation for the marketing of package holidays and travel vouchers; and defining the terms and conditions for providing online tourism services.
• Consumer law: advice on business-to-consumer relations, paying particular attention to antitrust issues, litigation, unfair commercial practices, and relations with Chambers of Commerce regarding the definition of standard contracts for consumers.

Jacobacci Avvocati assists clients with all aspects of antitrust law, with a particular focus on:

• compliance programmes.
• the assessment of risks associated with non-compliance.
• assistance in investigations by the Italian Competition Authority and the European Commission into cartels and abusive practices.
• review of contracts and articles of association of consortia and other collective bodies.
• notifications of mergers.
• complaints and reports to antitrust authorities regarding cartels, concerted practices or abusive practices.
• misleading advertising.
• abuse of economic dependence.
• litigation.

The firm's international focus has enabled our team to develop a keen understanding of the risks arising from breaches of national and EU antitrust law. This background enables us to provide targeted, bespoke assistance to businesses of all sizes, from multinationals - which are often subject to stricter scrutiny by the authorities due to their size and market position - to small and medium-sized enterprises operating in niche, highly specialised markets.

Jacobacci Avvocati views antitrust law as a fundamental and strategic element in competition between businesses and stands out for its proactive approach, both in preventive advice and in litigation, including before regulatory authorities.

Jacobacci Avvocati supports businesses in managing the processing of personal data, both in terms of compliance activities and in the development of special projects.

We support our clients throughout the process, from analysing the business context and defining compliance requirements to drafting policies and internal regulations.

We also assist with proceedings before the Italian Data Protection Authority, including audits, authorisations and inspections. We complement our advice with an analysis of the relevant contractual aspects.

Jacobacci Avvocati supports artists, museums, cultural institutions, collectors, businesses and operators in the art market in Italy and abroad, combining strategic advice, operational management and litigation.

We provide support at both national and international levels, covering all the main areas of interest:

• Copyright
• Contracts
• Clearance of Rights
• Creation and management of foundations, associations and committees
• Import and export of cultural goods
• Declaration of cultural interest
• Authentication and forgery of works
• Restitution of work
• Sponsorship and patronage
• Insurance
• Organisation of artistic events
• Resale rights
• Relationships with SIAE and foreign collecting societies
• Succession issues
• Litigation

We specialise in drafting and negotiating contracts relating to exhibitions, publications, sponsorships, sales of works and agreements between artists, galleries or collectors. We provide support in the establishment of foundations, associations and committees, in managing the authenticity of works, artistic or collecting legacies, and in donations to cultural institutions. We also assist clients with the import and export of cultural property, the investigation of any plagiarism or unauthorized reproductions, and the identification of rights holders from whom rights need to be acquired, offering comprehensive advice on all litigation related to these matters.