Intellectual Property

We have engaged for decades in the practice of IP law.

National and multinational companies belonging, among others, to the pharmaceutical and life sciences, luxury & fashion, entertainment & media, IT and automotive sectors are our regular clients.

Our expertise encompasses all aspects of IP including:

  • Patents (national and European)
  • Trademarks (national and European)
  • Industrial design (national and European)
  • Domain names
  • Copyrights
  • Piracy and anticounterfeiting
  • New technologies and media
  • IP litigation
  • Data protection
  • Customs and customs surveillance
  • Unfair competition
  • Trade secrets
  • Plant varieties and semiconductor topographies
  • Protected food, wine and other denominations of origin
  • Food & Wine, designations of origin and geographical indications
  • IP infringement damages.

The IP Team has worked together since the mid-early ‘90s of the previous century, and is very cohesive and well perceived by the outside world, as the exceptionally longstanding relationships with historical clients demonstrate.

Our IP practice has a strong contentions component. We regularly represent our clients in invalidity, forfeiture, infringement, unfair competition and damages cases, in ordinary as well as preliminary proceedings before the Specialized Chambers of all Courts and Courts of Appeal, the IPTO, the IPTO Board of Appeal and the Supreme Court.
In particular in patent litigations, we ordinarily operate in multi-jurisdictional contexts in strict liaison with other lawyers and correspondents in numerous European and non-European jurisdictions.
We are familiar with procedure and proceedings before the EPO and the EUIPO, as well as the WIPO.

Our services include counselling on all IP issues connected with extraordinary transactions, mergers, acquisitions and JVs, IP due diligence and compliance programs, licensing, commercial contracts and technology transactions with IP contents.

Criminal infringement work is carried out in close liaison with our criminal law counsels.

We regularly collaborate with leading forensic economists and academics in infringement damages cases.

 

WHY US?

We love to establish long-standing relationships.

Most of our IP clients are regular clients whom we have advised and represented over decades in the enforcement and defense of their IP rights in Italy and the European Union.

We deliver a fully integrated service.

We regularly collaborate with the Firm’s other practice areas, such as the M&A Team on deals presenting IP contents, the Administrative & Public Law Team, the EU & Competition Team, the Tax Team and the Criminal Law Team.

We are well versed in representing our clients before the EU and Italian Courts, in particular: the Italian Patent and Trademark Office (UIBM) and the Board of Appeal, the Specialized Chambers of Italian Courts and Courts of Appeal, the Italian Supreme Court, Council of State and Constitutional Court, the European Union Intellectual Property Office (EUIPO) and the General Court and the Court of Justice of the European Union.

 

WHAT DO OTHERS SAY ABOUT US?

“De Berti Jacchia Franchini Forlani’s efficient and responsive’ IP practice, headed by the ‘excellent’ Roberto Jacchia, recently represented Davidoff in several trade mark infringements. The ‘trustworthy and very thorough’ Maria Cristina Franchini is recommended along with Matteo Biondetti, who is ‘pragmatic and straight to the point”. Legal500

“De Berti Jacchia Franchini Forlani’s IP group has particular clout in the fashion industry and is adept at assisting high-profile clients such as H&M and Brioni with trade mark, patent and designs matters. Roberto Jacchia is the key contact”. Legal500

“De Berti Jacchia Franchini Forlani has strong advisory skills concerning trade marks and patents. Recent work includes defending the French publisher Editions Gallimard and one of its authors against an IP claim brought by an Italian movie production company. Other clients include Converse, H&M and GlaxoSmithKline. Roberto Jacchia and Maria Cristina Franchini are recommended”. Legal500

“The ‘very supportive’ De Berti Jacchia Franchini Forlani frequently assists Merck with the enforcement of its patents before the Rome and Milan IP courts. The client base also includes Staedlers and Gewiss. Roberto Jacchia and Matteo Biondetti are recommended”. Legal500