In Italy, a relatively modest volume of patent and technology licensing work is shared out among a large number of practitioners, from international full service firms to small domestic outfits. It is a particularly fragmented marketplace, where no one industry is dominant and where transactions can arise in sectors ranging from electronics and automotive to pharmaceuticals and information technology. Some commentators have noted a recent upturn in licensing activity, although this has not yet returned to pre-financial crash levels. Much licensing work is still done in-house, although law firms may be brought in at a later stage to review agreements. Overall, Italy is an importer of technology and patents; however, some of its pharmaceutical companies, universities and research institutes license out their patents. Milan, the commercial centre of Italy, hosts the greatest number of practitioners, but strong players can also be found in Rome and Turin.
Although it also offers general business and corporate law services, this firm is particularly strong in IP matters, including patent licensing and know-how transfer. The highly experienced Mario Franzosi is a longstanding and renowned player on the Italian IP marketplace. Some commentators note that he may be coming close to retirement; however, he remains an important and active figure.Bonelli Erede Pappalardo
One of the country’s largest general practice firms, Bonelli Erede Pappalardo is an important name in Italian law. Its IP practitioners regularly advise clients on the negotiation of licence agreements across a broad range of sectors, including biotechnology and software. While some of the firm’s licensing work comes from established domestic and international clients, it also handles standalone licensing deals. Giovanni Guglielmetti heads the IP department and is the leading licensing practitioner at the firm, covering agreements in technology and electronics.De Berti Jacchia Franchini Forlani Studio Legale
This full service firm has offices in Moscow and Brussels, as well as its two domestic bases, and offers licensing expertise to the software, pharmaceutical, transport and telecommunications sectors across its IP and IT and telecommunications departments. Based in Rome, Andrew Paton focuses on incoming work from multinationals; this includes cross-border agreements and joint ventures, as well as specific licensing projects. He has experience in the technology, pharmaceutical and construction sectors, with a specialisation in licensing relating to automotive and local transport.De Simone & Partners
Founded in 1972, this small firm has focused exclusively on IP issues since its inception. Today, it handles the licensing of patent rights, know-how and technology transfer, including as part of multi-jurisdictional and M&A deals. Founder and leading lawyer Domenico De Simone is “highly respected for his licensing activity; he is extremely clever and an expert in his field”.Dewey & LeBoeuf Studio Legale
The Italian branch of this global law firm is known for its corporate and M&A work. It is particularly active in technology licensing and lists a number of internet companies among its clients.DLA Piper Italy
An international firm with “top-flight capabilities”, DLA Piper strengthened its IP capacity when Roberto Valenti joined in 2007. He has considerable non-contentious experience, including in the drafting of patent licences and technology transfer agreements, and in the evaluation of intangible assets in M&A deals. His client base is concentrated on the life sciences sector. The firm recruited a number of new hires to the IP team in 2010 and is planning for continued growth.Hogan Lovells Studio Legale
One of the strongest of the international firms in Italy, Hogan Lovells handles complex patent and technology licensing for multinational and domestic clients. A large team of practitioners hailing from the firm’s IP group in Milan and its TMT base in Rome deal with licensing in the life sciences and high-technology sectors, among others. Luigi Mansani heads the IP department; his practice includes patent licensing in the telecommunications and electronics sectors. He is also a professor of IP and commercial law at the University of Parma.IP Law Galli
Although mainly active in litigation, this relatively young IP boutique, set up in 2004, also helps to broker technology transfer agreements involving patents, know-how and trade secrets. Clients range from multinational corporations to small domestic companies in sectors including electronics and telecommunications. Founding partner and leading light at the firm Cesare Galli is also a professor of IP law at the University of Parma. Throughout his career, he has been at the forefront of developments in biotechnology and computer-related IP law in Italy.Pavia e Ansaldo
Pavia e Ansaldo is a large and well-established full service Italian firm with an IP and IT practice that is “ready to deal with anything”. It has an international outlook, with significant licensing clients based in Germany, the United Kingdom and the United States. Department head Gian Paolo Di Santo is a senior partner with a wealth of experience across a broad range of IP and IT matters.Portolano Colella Cavallo Studio Legale
Established a decade ago, this fast-growing outfit deals exclusively with TMT matters. Its niche focus means that the firm can offer a high level of industry expertise to domestic and international clients, which include pharmaceutical companies and non-profit organisations. The firm’s Rome office is particularly well reputed for its telecommunications expertise. Founding partner Domenico Colella leads the IP team; his recent work has included reviewing the software supply chain, including licensing agreements, of a leading multinational corporation.Studio Legale Bird & Bird
One of the most highly regarded of the international players in Italy, Bird & Bird wins plaudits for its focus on licensing matters. The firm has a strong presence in the IT sector, with clients including banks and financial companies. Further licensing work is drawn from the biotechnology and charity sectors. Giovanni Galimberti is an IP practitioner of considerable renown, commended for his experience, knowledge and ability to cultivate client relationships. Massimiliano Mostardini has been involved in licensing matters throughout his legal career and currently has a strong focus on issues in the biotechnology sphere. The two men share responsibility for leading Bird & Bird’s IP team in Italy.Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati
This acclaimed boutique, founded in 1996, is closely associated with venerable patent attorney outfit Jacobacci and Partners. The firm has expanded its remit in recent years and now also has a corporate department, but remains best known for its IP work. Commentators note that it boasts a strong network of international clients. Fabrizio Jacobacci is the senior partner; he is known as a good litigator, but is also “doing excellent work in the licensing field; he works in a highly effective way”.Studio Legale SIB
This law firm works in close cooperation with IP consultancy Società Italiana Brevetti. Studio Legale SIB handles all areas of IP law, with a particular strength in pharmaceutical patent work. Clients include universities, which have increasingly been entering into licensing agreements with private companies. Founding partner Giovanni Grippiotti is best known for his trademark work; however, his practice also takes in licensing matters. He is also executive secretary of LES Italy.
Marco Consonni has joined Orsingher Avvocati Associati from Dewey & LeBoeuf and is the go-to licensing practitioner at the firm; his clients include banks and financial institutions, as well as high-technology and computer companies. Based in Turin, Roberto Prato is one of three senior partners at IP consultancy Studio Torta. He has a background in electrical engineering and specialises in patent work, including licensing agreements in the IT and electronics sectors. Mario Traverso at Studio Legale Traverso is an active player on the licensing marketplace. A well-known figure in Italian IP law, he completed a six-year tenure as president of LES Italy in 2010.