The draft law revising Italy’s Industrial Property Code has been definitively approved by parliament; changes of direct interest for IP right holders, and soon to become effective, 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.
Update: Italian Law of 24 July 2023, No. 102 “Amendments of the Industrial Property Code set forth in Legislative Decree of 10 February 2005 No. 30” has been published in the Italian Official Journal No. 184 of 8 August 2023, and its date of entry into force is 23 August 2023.
On 18 July 2023 the Italian parliament’s lower chamber definitively approved the draft law revising the Italian Industrial Property Code (IIPC); the revision is part of the “Strategy guidelines on intellectual property” for 2021-2023, adopted on 23 June 2021 (read more here) for the purpose of implementing the Italian National Recovery and Resilience Plan.
The amendments introduced by the new law aim to make Italian enterprises and research organisations more competitive, encourage the use of intellectual property rights (IP rights) and streamline administrative procedures for IP rights protection and enforcement.
The approved law has maintained most of the proposals originally tabled in the draft (read more here). While many of the amendments concern procedural and administrative aspects, highlighted below are the changes of immediate interest for holders of IP rights, that will enter into force after publication of the definitive text in Italy’s Official Journal (Update: date of entry into force is 23 August 2023, see details above).
Geographical indications and denominations of origin
The amendments 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 will be able, once the revised IIPC is in force, 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 will receive temporary protection so as to make protection under IP laws run from the date of display. The 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 IIPC currently provides that a researcher owns exclusive rights on the patentable invention of which he or she is the author, unless the invention is the result either of research funded privately (even only in part), or of 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.
The newly approved changes reverse the current situation: the university or research organisation shall 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 shall be entitled to file a patent application in his or her own name.
Moreover, the amended provision will 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 changes will 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 puts an end to a competitive disadvantage for Italian patent applicants.
Enforcing IP rights at official or officially recognised trade shows
Currently the IIPC’s Article 123(3) stipulates that if products displayed at official or officially recognised trade shows are suspected of infringing IP rights, law enforcement authorities cannot immediately seize the products, but merely take down a description of them. The approved amendments repeal paragraph 3, allowing enforcement authorities to immediately seize the goods under a court order grounded on the suspicion of an infringement of IP rights.
Coexistence of European patent, European patent with unitary effect and Italian patent
Article 59 of the IIPC provides that when an Italian patent and a European patent valid in Italy (or a European patent with unitary effect) have been granted for the same invention to the inventor or to the inventor’s successor in title with the same filing or priority date, the Italian patent maintains its effects and coexists with the European patent.
Less paper, access to e-filing simplified
Amendments to Article 147 of the IIPC have scrapped the obligation for Chambers of commerce to send paper documents to the Italian Patent and Trademark Office (IPTO) and simplified access to the e-filing facility.
Appeals against IPTO decisions
The decisions of the Board of Appeals against decisions of the IPTO will be quicker, as the term for summoning the parties has been reduced from 40 to 30 days. The term of office of the board itself has been extended from 2 to 4 years.
Improvement of trademark invalidity and revocation procedure
The trademark invalidity and revocation procedure, in force since 29 December 2022 (read more here), will offer the parties involved the option of reaching a conciliation agreement within two months from the date of communication of the request, subject to verification of eligibility and admissibility requirements by the IPTO. The two-month period may be extended up to a maximum of one year, upon joint request of the parties.