Areas of practice

Jacobacci Avvocati supports clients across all areas of intellectual property.

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

Patents

Jacobacci Avvocati offers specialised support in patent matters. The firm handles a large volume of intellectual property litigation, both before the national courts of Italy and France, as well as internationally. The firm is particularly renowned for its experience as Italian counsel within multinational patent litigation and in cross-border cases, primarily in the pharmaceutical, medical devices and high-tech sectors.

Jacobacci Avvocati is quickly building a portfolio of cases before the Unified Patent Court (UPC), assisting clients directly before the Local and Central Divisions in Milan and Paris, and providing support to clients and colleagues before other UPC venues.

Trademarks and designs

Jacobacci Avvocati assists many well-known portfolio owners in highly complex matters of significant importance, before Italian courts, including the Italian Court of Cassation and before the EU Courts of Justice.

In high-stakes litigation involving multiple jurisdictions, we support multinational clients as Italian counsel, providing strategic support and comprehensive protection of their rights in collaboration with the other national teams.

We also support our clients in matters relating to the protection, management and enforcement of EU design rights, including in litigation and in matters relating to the ongoing protection of industrial property rights.

Know-how and trade secrets

Jacobacci Avvocati assists 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 company policies and non-disclosure agreements;
• employee training to prevent unauthorised disclosure;
• assistance to clients in trade secret litigation.

Copyright

Jacobacci Avvocati offers 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 life cycle of the copyright, including copyright registration, portfolio monitoring and, if necessary, litigation.

The firm also has extensive experience 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 managing disputes relating to the misuse of intellectual property on the internet.

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 Italian, French and foreign civil courts and administrative courts.

The firm also has extensive experience in the protection of personality rights, offering clients comprehensive protection.

Focus: IP Due Diligence

Jacobacci Avvocati assists with a high volume of IP Due Diligence activities, with the scope of identifying, assessing and protecting intellectual property rights in the context of corporate transactions, with particular regard to mergers and acquisitions: all this to ensure that the assets being acquired, or sold, can be utilized as intended by the parties.

The scope of Jacobacci Avvocati’s services include:

• 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 potential 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.

• Civil litigation
• UPC litigation
• Italian arbitration
• International arbitration
• Mediation

The extensive experience of the Jacobacci Avvocati professionals in the field of litigation and dispute resolution - domestic and international, before civil courts, arbitration tribunals and in mediation - allows it to protect client rights and interests in all of the firm's areas of specialisation.

In addition, the firm provides continuous assistance to companies involved in litigation abroad, support that is made possible thanks to 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 unique perspective allows our professionals to decode the mechanisms of foreign proceedings, and to better support the client in understanding the legal mechanisms, strategies and phases of the case.

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.

Jacobacci Avvocati provides 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, putting in place effective regulatory and litigation strategies to enable companies to achieve their intended results in an increasingly complex environment.

Jacobacci Avvocati has significant experience in the field of commercial law, operating in all areas that are of interest to companies.

Our team supports clients both in the ordinary management of business activities - drafting legal opinions and contracts, providing support in negotiations - and in the development and implementation of growth strategies, relating to both commercial issues and the management of industrial property assets, which are tailored to the individual needs of the client.

Jacobacci Avvocati also assists clients in collaboration with business partners, both in purely commercial matters and with industrial property matters. This assistance includes advising on the drafting and negotiation of business contracts, including in specialised 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 relationships 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.

Jacobacci Avvocati's international presence has allowed its professionals to develop a high degree of sensitivity to the risks associated with violations of domestic and EU antitrust law. This background enables the firm 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.

Recognising antitrust law as a fundamental and strategic element in the natural state of competition between companies, our firm stands out for its proactive approach in assisting clients both by offering preventive advice and in litigation, including before regulatory authorities.

Jacobacci Avvocati supports businesses in managing issues relating to the processing of personal data, both in terms of compliance activities and in the development of targeted 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. This assistance is complemented by ongoing advice on contractual and commercial profiles.

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 support.

We provide assistance both in Italy and abroad, 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 goods, investigations into plagiarism or unauthorised reproductions, and the identification of rights holders from whom rights need to be acquired, offering comprehensive advice and litigation support related to these matters.