SEP (standard‑essential Patent) Litigation in Italy 2026: Injunctions, FRAND Defences and Practical Steps for Rights‑holders & Implementers

This article is aimed at in‑house counsel, SEP owners, implementers and litigation funders assessing enforcement or defence strategies in Italy in 2026. It explains Italian injunction practice, FRAND defences, damages approaches, procedural steps (evidence, experts, interlocutory measures) and practical checklists for litigators and corporate decision‑makers.

SEP litigation Italy is entering a period of heightened attention in 2026, as policy debate at events such as LES Italy and the continued bedding‑in of judicial reform converge to reshape how injunctions and FRAND defences are handled before Italian courts. This guide sets out, in practitioner terms, how standard‑essential patents Italy disputes are brought and defended, where they are heard, and how courts weigh injunction risk against a party’s willingness to license on fair, reasonable and non‑discriminatory terms. It is written for decision‑makers weighing whether to enforce, license or negotiate, and for those already facing an infringement claim.

Every legal point is grounded in primary sources, the Italian Industrial Property Code, the Code of Civil Procedure, and the foundational CJEU ruling in Huawei v ZTE. Read it as a strategic map, not a substitute for tailored advice on the facts of a specific dispute.

Executive summary: key takeaways for rights‑holders and implementers

• Injunctions are available but conditioned. Italian courts can grant both interim and final injunctions for patent infringement, but for SEPs they apply the negotiation framework derived from Huawei v ZTE, meaning a rights‑holder who skips good‑faith licensing steps risks refusal.
• Willingness to license is the pivot. An implementer that demonstrates genuine willingness to take a FRAND licence materially reduces injunction exposure; a hold‑out posture increases it.
• Documentation wins cases. Both offers and counter‑offers must be evidenced, quantified and timely. Courts scrutinise the paper trail of negotiations.
• Damages turn on expert proof. SEP royalties are assessed through comparable licences, hypothetical‑negotiation reasoning and proportionality, requiring credible technical and economic experts.
• Competition law runs alongside. The AGCM can examine abuse concerns, and antitrust arguments frequently appear as FRAND defences in civil proceedings.
• Timing and cost demand early planning. Interlocutory relief moves quickly; substantive proceedings and expert phases run long. Budget accordingly and decide early between litigation, mediation and licensing.

The threshold decision, sue, license or negotiate, should be made only after assessing essentiality, validity, the strength of any FRAND offer already on the table, and the counterparty’s conduct. That assessment frames every subsequent choice in sep litigation italy.

Background: SEPs, FRAND and the Italian legal framework

What is a standard‑essential patent?

A standard‑essential patent is a patent that reads on a technical standard, meaning that implementing the standard necessarily infringes the patent. Standards are developed by standard‑setting organisations such as ETSI, and patent owners typically declare their essential patents to the relevant body and commit to license them on FRAND terms. This declaration is the foundation of the entire licensing ecosystem: without it, standardised technologies, from mobile connectivity to video codecs, could not be deployed at scale. In standard‑essential patents Italy disputes, the essentiality declaration and the associated FRAND commitment are the first documents a litigator will examine.

FRAND explained

FRAND stands for fair, reasonable and non‑discriminatory. It is not a fixed formula but a set of obligations attaching to the licensing relationship. The “fair and reasonable” component addresses the level of royalty and the commercial terms, while “non‑discriminatory” requires that similarly situated licensees be treated consistently. Critically, FRAND is a two‑way street: the patent owner must offer terms within a FRAND range, and the implementer must engage constructively and promptly rather than delaying to defer payment. The negotiation obligation, the process by which parties exchange offers and counter‑offers in good faith, is as important as the eventual price. FRAND Italy analysis therefore focuses heavily on conduct, not just numbers.

Applicable law in Italy

The statutory backbone for patent enforcement is the Italian Industrial Property Code (Legislative Decree No. 30/2005, as subsequently amended), which sets out the civil remedies available to a patent holder, including injunctive relief and damages. Procedural machinery, provisional measures, evidence‑gathering, the appointment of technical experts and enforcement of awards, is governed by the Italian Code of Civil Procedure. Overlaying both is European Union law: the CJEU’s judgment in Huawei v ZTE (Case C‑170/13) established the framework Italian courts follow when a SEP owner seeks an injunction, requiring a structured sequence of notice, offer and counter‑offer before injunctive relief can properly issue.

Competition law adds a further dimension, with the Autorità Garante della Concorrenza e del Mercato (AGCM) empowered to examine whether the exercise of SEP rights amounts to an abuse of a dominant position. Any credible strategy in sep litigation italy must integrate all three layers, national statute, EU precedent and competition oversight, from the outset.

Where SEP disputes reach Italian courts: jurisdiction and forum considerations

Which courts hear SEP cases?

Patent and other industrial property disputes in Italy are allocated to specialised business sections of the ordinary courts (the sezioni specializzate in materia di impresa within the tribunali). The Tribunale di Milano is widely regarded as a leading forum for complex technology and patent litigation, given the concentration of expertise among its judges and its familiarity with the technical and economic issues that SEP cases raise. For rights‑holders and implementers alike, the choice of forum, where a choice exists, carries strategic weight, because the receiving court’s experience with FRAND analysis affects both the speed and the sophistication of the outcome.

Italian courts hearing patent disputes will expect a properly pleaded case supported by technical evidence and, in SEP matters, a clear account of the parties’ licensing conduct.

Preliminary jurisdictional checks and cross‑border issues

Because SEP portfolios are inherently international, jurisdiction is rarely a formality. A litigator must verify which national patents are asserted, where infringing acts occur, and how the EU rules on jurisdiction and the recognition of judgments interact with any parallel proceedings elsewhere in Europe. Service of process, the identification of the correct defendant entity within a corporate group, and the risk of conflicting rulings in other member states all require early attention. In cross‑border sep litigation italy, coordination with counsel in other jurisdictions is often essential to avoid inconsistent injunctions or duplicative damages exposure.

When to seek EU interim measures

Where infringement spans multiple EU states, a party may consider interim measures that operate across borders under the European jurisdictional regime. The tactical value of such measures lies in speed and reach, but they carry procedural complexity and the risk of counter‑applications. Rights‑holders should weigh whether a targeted Italian injunction, sought before a court experienced in patent disputes, delivers more predictable relief than a broader cross‑border application. Implementers, conversely, should monitor for the possibility of foreign proceedings being used to apply pressure through the Italian market.

Where European patents are involved, parties should also consider the role of the Unified Patent Court (UPC), which has jurisdiction over European patents with unitary effect and, subject to opt‑out arrangements, over classic European patents.

Injunctions in SEP cases: interim and final relief in Italy

Legal standard for provisional measures

Provisional and precautionary measures under the Italian Code of Civil Procedure allow a patent holder to seek urgent injunctive relief before a full trial concludes. The applicant must generally demonstrate a plausible right (fumus boni iuris) and a risk of harm that justifies urgency (periculum in mora). The burden rests on the applicant to establish both limbs, and the court weighs the strength of the infringement case against the prejudice an injunction would cause. In the SEP context, this ordinary standard is layered with the FRAND negotiation analysis, so that even a technically strong infringement case may not yield an injunction if the rights‑holder has failed to behave as a willing licensor.

How Italian courts apply Huawei v ZTE principles

The CJEU in Huawei v ZTE set out a sequence that a SEP owner holding a dominant position should follow before seeking an injunction: alert the implementer to the infringement, offer a licence on FRAND terms with a specified royalty and its basis, and give the implementer a fair opportunity to respond with a diligent counter‑offer. Where the implementer engages genuinely, an injunction may be refused; where the implementer delays or refuses to engage, the injunction becomes appropriate. Italian courts apply these principles when assessing sep litigation italy claims, examining the correspondence and conduct of both sides to decide whether the negotiation framework was respected.

The practical consequence is that the outcome of an injunction application often depends less on the patent’s technical merits and more on whether each party played its assigned role in the licensing process.

Practical steps to avoid or prevent an injunction

For an implementer, the surest way to reduce sep injunction Italy exposure is to demonstrate willingness to license before litigation crystallises. A recommended checklist includes:

• Respond promptly to infringement notices. Silence or delay is among the most damaging conduct in the eyes of a court applying the Huawei framework.
• Make a genuine, documented counter‑offer. Set out a royalty figure and its methodology rather than a bare rejection.
• Consider a deposit or security. Placing amounts in escrow or offering security signals good faith and readiness to pay a FRAND rate once determined.
• Preserve the negotiation record. Keep a clear, dated trail of offers, counter‑offers and technical exchanges.
• Address supply‑chain notices. Where downstream customers are targeted, coordinate a consistent response to avoid fragmented positions.

For a rights‑holder, the mirror‑image steps, a clear infringement notice, a properly reasoned FRAND offer, and a documented opportunity for the implementer to respond, are the price of admission to injunctive relief.

Remedies and tailoring

Injunctions need not be absolute. Italian courts can tailor relief through security bonds, injunctions confined to specific products, or conditions that balance the rights‑holder’s protection against the implementer’s legitimate business. Such tailoring is particularly relevant in SEP cases, where a blunt market‑wide injunction may be disproportionate to the value of a single patent within a large standardised portfolio.

Illustrative interlocutory relief timeline

Timescales vary with complexity and court workload; parties should treat this sequence as an indicative structure rather than a fixed calendar.

FRAND defences in SEP litigation Italy: strategy, evidence and courtroom framing

Typical FRAND defences

An implementer facing a SEP claim has a menu of defences, often deployed in combination. The most common are:

• Willingness to license. Demonstrating that the implementer engaged in good‑faith negotiation and stands ready to accept FRAND terms, thereby undercutting the case for an injunction.
• FRAND counter‑offer. Advancing a reasoned alternative royalty, supported by comparable licences and methodology.
• Lack of essentiality. Challenging whether the asserted patent is truly essential to the standard, which, if successful, removes the FRAND obligation and the leverage that comes with it.
• Invalidity. Attacking the patent on ordinary grounds such as lack of novelty or inventive step.
• Antitrust counterclaims. Arguing that the manner of enforcement constitutes an abuse of dominance, engaging competition law and potentially the AGCM.

The frand defence Italy toolkit works best when the defences reinforce one another, for example, a credible counter‑offer paired with an essentiality challenge signals both willingness to pay and a refusal to overpay for a weak patent.

How to present a FRAND offer in court

Whether advancing an offer or a counter‑offer, the presentation must be court‑ready. That means a documented royalty figure, a transparent explanation of how it was derived (comparable licences, a per‑unit or ad valorem basis, aggregate royalty considerations for the standard), and a chronology showing the offer was made in good time. Courts assessing FRAND Italy disputes look for internal consistency: an offer that cannot be reconciled with the party’s own licensing history or with genuinely comparable market deals will struggle. Both sides should anticipate that their negotiation correspondence will be read closely, so every communication should be drafted with an eye to how it will appear in the record.

Consistency with competition law: AGCM considerations

Because SEP holders frequently occupy dominant positions, enforcement conduct can attract competition scrutiny. The AGCM has jurisdiction to assess whether the exercise of SEP rights, for instance, seeking an injunction against a willing licensee or demanding excessive royalties, amounts to an abuse. Rights‑holders should therefore calibrate their enforcement to remain within the Huawei v ZTE framework, which itself was designed to reconcile patent enforcement with competition law. Implementers can raise competition arguments as defences within civil proceedings and, in appropriate cases, bring concerns to the attention of the AGCM. The interplay means that antitrust exposure is a live consideration on both sides of sep litigation italy.

Tactical considerations for implementers

The overriding tactical imperative for an implementer is to avoid the appearance of hold‑out. Demonstrable willingness to pay a FRAND rate, through prompt engagement, a substantiated counter‑offer, and where appropriate a deposit, is the strongest shield against an injunction. Conversely, implementers should resist hold‑up by the patent owner, using essentiality and validity challenges to ensure they pay only for genuinely essential, valid rights. Balancing these positions requires disciplined internal governance so that commercial, technical and legal teams speak with one voice throughout the dispute.

Damages, royalties and accounting: quantification in Italy

Approaches to assessing SEP royalties

Quantifying sep damages Italy requires translating a FRAND commitment into a monetary figure. Italian courts, assisted by experts, typically reason from several converging approaches: the hypothetical negotiation that willing parties would have reached, benchmarking against genuinely comparable licences, and consideration of the incremental value the patented technology contributes to the standardised product. No single method is decisive; the court seeks a proportionate outcome that reflects the patent’s contribution rather than the value of the standard as a whole.

Evidence required

Damages proof is evidence‑intensive. Parties rely on economic and technical experts, licensing databases, comparable agreements and, where available, witness testimony about the commercial context of past deals. The quality and comparability of licence evidence often determines the credibility of a royalty claim. Confidentiality is a recurring concern, since comparable licences are frequently subject to non‑disclosure obligations, requiring protective arrangements before they can be placed before the court.

Calculating damages versus ongoing royalties

A court may award damages as a lump sum reflecting past infringement or structure relief as an ongoing royalty for continued use, depending on the facts and the parties’ positions. Where an injunction is refused because the implementer is willing to license, the natural corollary is a determination of the appropriate ongoing FRAND royalty. The interaction between injunction and damages is therefore not merely sequential but conceptual: the availability of monetary relief on FRAND terms is precisely what can render an injunction unnecessary.

Enforcement and execution of monetary awards

Securing a favourable judgment is only half the exercise. Enforcement of monetary awards proceeds under the Code of Civil Procedure, using mechanisms such as attachment of assets and other execution procedures. Rights‑holders should plan enforcement strategy early, particularly where the counterparty’s assets or corporate structure could complicate recovery, so that a hard‑won award translates into actual payment.

Evidence, experts and technical proof: courtroom practicalities

Using technical experts in Italian courts

Technical complexity is inherent to SEP cases, and Italian procedure provides for court‑appointed experts (consulenti tecnici d’ufficio) alongside party‑appointed experts (consulenti tecnici di parte). The court‑appointed expert’s report frequently carries significant weight, so parties invest heavily in framing the technical questions, engaging with the expert’s methodology and, where the process allows, testing conclusions through submissions and technical exchanges. Selecting party experts with genuine standing in the relevant technology, and preparing them to communicate clearly to a non‑specialist bench, is a decisive practical step.

Document production and confidentiality

SEP disputes turn on documents, licence agreements, technical specifications and negotiation records, many of which are commercially sensitive. Italian courts can order document production and impose confidentiality safeguards, and parties should seek protective arrangements to allow disclosure of comparable licences without prejudicing third‑party confidentiality. Handling this well is often the difference between being able to prove a FRAND royalty and being unable to place the key evidence before the court.

Demonstrative exhibits for judges

Because judges are legally rather than technically trained, effective demonstratives matter. Clear diagrams mapping the patent claims to the standard, timelines of the negotiation, and side‑by‑side comparisons of licence terms help the court grasp both the technical and the FRAND dimensions of the case. Best practice is to make the complex accessible without oversimplifying the underlying evidence.

Practical litigation timeline and checklist: rights‑holder and implementer tracks

The two sides of a SEP dispute follow distinct but mirror‑image paths. The table below sets out parallel tracks with key decision checkpoints.

At each checkpoint, both parties should reassess whether continued litigation or a negotiated licence better serves their commercial interest. The discipline of revisiting that question, rather than committing irreversibly at the outset, is a hallmark of well‑run sep litigation italy strategy. Counsel referral and early case assessment can be arranged through the Litigation, Italy practice area and the Italy lawyer directory, Litigation.

Comparative table: Italy versus selected EU jurisdictions on SEP injunctions

The table offers a high‑level orientation only. Jurisdictional detail varies significantly, and the United Kingdom is included for practitioner relevance despite operating outside the EU framework.

The common thread across EU jurisdictions is the Huawei v ZTE emphasis on negotiation conduct, but the willingness of courts to grant injunctions, and the mechanics of FRAND rate‑setting, differ meaningfully. Strategic forum awareness is therefore central to any cross‑border enforcement plan.

Practical recommendations and next steps for counsel

• In‑house counsel. Build and preserve a disciplined negotiation record from the first contact; ensure commercial, technical and legal functions are aligned before any offer or response is sent.
• SEP owners. Follow the Huawei v ZTE sequence meticulously, notice, reasoned FRAND offer, opportunity to respond, before seeking injunctive relief, and prepare robust comparable‑licence evidence for damages.
• Implementers. Demonstrate willingness to license through prompt engagement, a substantiated counter‑offer and, where appropriate, a deposit; deploy essentiality and validity challenges to guard against overpayment.
• Litigation funders. Assess essentiality, validity, the strength of the negotiation record and enforcement prospects before committing, and factor the long expert phases into cost modelling.

Underlying all four roles is a single strategic question: when to litigate and when to mediate or license. Litigation is warranted where a counterparty refuses to engage or where essentiality and validity are genuinely contested; a negotiated licence is preferable where the parties fall within a shared FRAND range and the dispute is essentially about price.

Conclusion and next steps

SEP litigation Italy in 2026 rewards preparation, discipline and an early, honest assessment of the negotiation record. Whether you are a rights‑holder weighing an injunction application or an implementer defending one, the decisive factors are consistent: essentiality, validity, the quality of the FRAND offer or counter‑offer, and the conduct of both parties measured against the Huawei v ZTE framework. Italian courts have the tools to grant powerful relief and to quantify FRAND royalties, but they apply them through a lens of proportionality and good faith.

To move from strategy to action, early case assessment, injunction planning, FRAND offer drafting or damages modelling, readers can connect with specialist Italian litigation counsel through the Litigation, Italy practice area and the Italy lawyer directory, Litigation. Further practitioner guides in this series cover enforcing SEP injunctions in Italy, collecting and presenting technical evidence in Italian patent disputes, and cross‑border SEP enforcement and EU interim measures.

Sources

1. Codice della Proprietà Industriale (Legislative Decree No. 30/2005), Normattiva
2. Codice di Procedura Civile, Normattiva
3. Court of Justice of the European Union, Huawei v ZTE (C‑170/13)
4. Ufficio Italiano Brevetti e Marchi (UIBM)
5. Autorità Garante della Concorrenza e del Mercato (AGCM)
6. European Commission, Directorate‑General for Competition (DG COMP)
7. World Intellectual Property Organization (WIPO)
8. European Union Intellectual Property Office (EUIPO)
9. Unified Patent Court (UPC)