The Italian government has tabled a draft law revising the Industrial Property Code; the changes of direct interest for IP right holders concern geographical indications and denominations of origin, the possibility to defer the payment of the fee for filing a patent application, inventions resulting from university research and the enforcement of IP rights during trade shows.
On 6 April 2022 the Italian Council of ministers approved a draft law revising the Industrial property Code; the revision is part of the “Strategy guidelines on intellectual property” for 2021-2023, adopted on 23 June 2021 for the purpose of implementing the Italian National Recovery and Resilience Plan.
The amendments proposed in the draft law aim to make Italian enterprises and research organisations more competitive, encourage the use of intellectual property rights and streamline administrative procedures for the protection and enforcement of intellectual property rights.
While many of the proposed changes concern procedural and administrative aspects, highlighted below are the ones of immediate interest for holders of intellectual property rights.
Geographical indications and denominations of origin
If approved, the draft law would bar from trademark registration signs that evoke, usurp or imitate geographical indications and denominations of origin protected under Italian or European Union law or by international agreements in force; holders of protected geographical indications and denominations of origin would be able to oppose the registration of trademarks also in the absence of a producers’ association (consortium) recognised by the law.
Designs and models
Designs and models displayed in national or international trade shows would receive temporary protection so as to make protection under IP laws run from the date of display. The proposed change aims to prevent the disclosure of the design or model during the trade show from destroying registrability requirements (novelty and individual character).
Inventions created in universities and research organisations
The Italian Industrial property Code currently provides that a researcher owns exclusive rights on the patentable invention of which he or she is the author, unless the invention results either from research funded privately (even only in part), or from specific research projects funded by a public body that is not the one employing the researcher.
Such provisions apply only to state-owned universities and research organisations.
If approved, the changes would reverse the current situation: the university or research organisation would hold the rights to the invention created in execution of a contract, or within an employer-employee relationship (also temporary) with a university or public research organisation, or within a research agreement between the two. Should the university or research organisation not take action for six months, the inventor would be entitled to file a patent application in his or her own name.
Moreover, the amended provision would be applicable also to privately owned universities recognised under Italian law, to scientific institutes for research, hospital and health care (known in Italy as IRCCS) and bodies that carry out not-for-profit research activities.
Deferred payment of patent filing fees
The proposed changes would allow the deferment, for up to a month after the date of filing, of the payment of the filing fee for a patent application. Many national and international patent offices currently allow applicants to defer the payment of the filing fee, so the change would eliminate a competitive disadvantage for Italian patent applicants.
Enforcing IP rights at official or officially recognised trade shows
Currently a provision of the Industrial Property Code stipulates that if products displayed at official or officially recognised trade shows are suspected of infringing intellectual property rights, law enforcement authorities cannot immediately seize the products, but merely take down a description of them. The draft law would repeal such a provision, allowing enforcement authorities to immediately seize the goods under a court order grounded on the suspicion of an infringement of intellectual property rights.
The draft law is currently in the Italian legislative pipeline, and could undergo changes before reaching approval stage.