Italy: Major changes to Intellectual Property Code come into force | JD Supra

Italy: Major changes to Intellectual Property Code come into force | JD Supra

Italian intellectual property framework: the IPC and the Amendment Law

The Italian intellectual property framework is mainly set out in the Italian Intellectual Property Code (“IPC”). Aspects of the IPC which relate to registered and unregistered intellectual property rights (excluding copyright), have been substantially amended by Law No.102 of 24 July 2023 (the “Amendment Law”), which comes into force today, 23 August 2023.

The primary objectives of the Amendment Law are twofold: first, to streamline intellectual property registration and enforcement procedures, including through digitalization; and second, to strengthen intellectual property protection, in particular for those rights critical to preserving Italian intangible assets and to fostering Italian companies’ ability to compete on the market.


University staff inventions

One of the most relevant changes to the IPC concerns inventions made by university researchers and professors. The previous wording of Article 65 IPC provided that the right to  patent an invention belonged to researchers, for inventions developed in the course of an employment relationship with a university or a public research institution. Article 65, also known as “professor’s privilege” thus stood in sharp contrast with Article 64 IPC, which stated that employee inventions  first and foremost belong to the employer. 

The new formulation of Article 65, as amended by Article 3 of the Amendment Law, instead provides that when an invention is made in the course of an employment relationship with a university or a public research institution, the respective rights belong, as a general rule, to the institution. The inventor has the right to be recognized as the author of the invention (as a so-called moral right). The inventor has a duty to disclose the invention to the research institution, which can then decide whether to file the patent application or not. If the research institution does not file the patent application within six months from the disclosure, extendable by an additional three months, the researcher can do so independently in its own name. The same applies if the research institute communicates to the researcher that it is not interested in filing the patent application. Thanks to the newly formulated Article 65, Italy has aligned its intellectual property law with the majority of European countries, which had long abandoned the “professor’s privilege” approach.

To further support research institutions, Article 4 of the Amendment Law has introduced a new Article 65-bis IPC which allows to these structures to establish Technology Transfer Offices, whose function is to “promote the valorisation of intellectual property rights, also by promoting collaborations with businesses”.


Italian double-patenting

Another remarkable amendment in patent law is that affecting Article 59 IPC. The old provision established the pre-eminence of European patents in cases where, for the same invention, an Italian patent and an European patent designating Italy or an European patent with unitary effect had been granted to the same inventor or their successor in title having the same application or priority dates. This rule implied the Italian patent would have ceased having effect once the deadline to file an opposition before the European Patent Office expired or the European patent was maintained after the opposition proceedings were concluded. In contrast, the new Article 59 IPC provides that the Italian patent will maintain its effect and coexist with a European patent designating Italy or a European patent with unitary effect for the same invention. In other words, the Italian legislator has introduced a national double-patenting rule. Remarkably, the Amendment Law did not introduce any particular safeguarding mechanisms that would limit the enforcement of an Italian patent in case of parallel UPC proceedings.


Designations of origin and geographical indications

The protection granted to designations of origin and geographical indications is reinforced. 

The updated legislation prevents the registration of trademarks that evoke, misuse, or imitate designations or indications (Article 14 IPC, as amended by Article 1 of the Amendment Law). This rule actually mirrors Article 13(b) of Regulation (EU) No 1151/2012 which had not been previously implemented in Italy.

In addition, a new procedural guideline, aimed at exerting greater control over designations of origin and geographical indications, grants wider powers to the Ministry of Agriculture, Food Sovereignty and Forestry (“Ministry of Agriculture”). The Ministry of Agriculture is in charge of giving a binding opinion on whether a word, figure, or sign sought for trademark registration amounts to a usurpation, imitation, or evocation of geographical indications or indications of origin, pursuant to Article 14(b) IPC. The Italian Patent and Trademark Office (“IPTO”) is required to forward to the  Ministry of Agriculture the trademark specimen of any trademarks linked to agricultural products and initial agri-food processing, which contain or consist of geographical denominations and the Ministry of Agriculture must provide a binding opinion within twenty days of receiving the request (Article 170 IPC, as amended by Article 14 of the Amendment Law).

Finally, companies using designations of origin and geographical indications that are not represented by a consortium which has been formally recognized, now have the ability to initiate opposition proceedings against trademark registrations, through the Ministry of Agriculture. This rectifies a previous gap in the IPC that hindered many companies utilizing designations of origin and geographical indications from enforcing their rights under the IPC, in the absence of a recognized consortium, as the law only allowed those entities to start an opposition in defence of designations of origin and geographical indications (Article 177 d-bis IPC, amended by Article 15 of the Amendment Law).


Designs

Among the changes introduced by the Amendment Law are those pertaining to designs. Designs can now obtain temporary protection if exhibited at official or officially recognized shows held in Italy or in Member States for which the principle of reciprocity applies.

To secure this protection, it is necessary to submit an application to the Ministry of Enterprises and Made in Italy within six months of the exhibition date. Once accepted, this protection provides the applicant with priority status for their registration application, commencing from the day of the exhibition (Article 34-bis IPC, amended by Article 2 of the Amendment Law).


Procedural rules

The Amendment Law has also introduced a series of procedural rules aimed at streamlining processes and promoting digitaliza tion. We already mentioned some of them. In addition to the aforementioned changes, the following key revisions are implemented.

(a)    Seizure of products at fairs

The Amendment Law now allows the seizure of products which are exposed at fairs, by repealing the third paragraph of Article 129 IPC (Article 22 of the Amendment Law). The previous version of Article 129 IPC stated that infringing products exhibited at fairs or exhibitions held in Italy (or transiting from or to Italy) could never be seized, but only described. This change has severe practical consequences for enterprises, considering the public exposure that these fairs have and their importance for businesses.

(b)    Nullity proceedings

The Amendment Law introduces a new ground for nullity proceedings, enabling the request for nullity of a trademark in cases where the registration of signs, words, or logos could potentially jeopardize Italy’s image and reputation (Article 184bis IPC, amended by Article 26 of the Amendment Law).

Filing multiple nullity proceedings based on different trademarks against the same trademark is precluded, subject to a condition: that the trademark on the basis of which the nullity is claimed could have been enforced at the moment of filing of the nullity proceedings (Article 184bis IPC, amended by Article 26 of the Amendment Law).

A cooling-off period is now granted, also within nullity proceedings. The steps are identical to that applicable to oppositions: upon receipt of a nullity request, the IPTO will notify the parties, informing them of the opportunity to reach an agreement within two months from the communication date. This period can be extended up to one year. Should no agreement be reached by the deadline, the trademark owner facing nullity proceedings has 60 days to file its brief (Article 184quater IPC, amended by Article 27 of the Amendment Law).

Finally, the nullity procedure may now also be terminated if the trademark application is abandoned (Article 184octies IPC, amended by Article 28 of the Amendment Law). 

(c)    Opposition procedures

As mentioned above, oppositions may now be initiated by the Ministry of Agriculture for geographical indications and indication of origins that do not have a recognized consortium.

The Amendment Law clarifies that the two-month term for the IPTO to communicate the initiation of opposition proceedings (and the possibility of reaching an agreement within two months) does not apply if the opposition is suspended under Article 180 IPC (sections b) to e-ter) or if an applicant files a limitation request necessitating the IPTO to hear the opponent before continuing opposition proceedings (Article 178 IPC, amended by Article 25 of the Amendment Law).

(d)    Commissione Ricorsi (Appeal Commission)

In proceedings before the Commissione Ricorsi, the office is now required to communicate the date of the first hearing at least 30 days in advance, as opposed to the previous 40-days notice (Article 136quinquies IPC, amended by Article 10 of the Amendment Law).

Also, the term of service for members of the Commissione Ricorsi has been extended to four years from the previous duration of two years (Article 135 IPC, amended by Article 9 of the Amendment Law).

(e)    Filing of documents  

Applications, requests, deeds, documents, and briefs submitted in original to the Chambers of Commerce or other entities in charge under the IPC will no longer be transmitted to the IPTO within ten days of receipt (Article 147 IPC, amended by Article 12 of the Amendment Law). Instead, these entities will retain and transmit the materials to the IPTO only upon request. Such a request can be made by the IPTO within specific timeframes: 

i)    Within 3 years for design applications

ii)    Within 1 year for all other cases

Notably, applications for patents and utility models remain an exception, with their related documents always transmitted to the IPTO.

To encourage digitalization, the Amendment Law now provides that digital identity authentication of users accessing and utilizing the IPTO digital platform for filing supersedes the need for digital signatures on filed documents.

(f)    Admissibility of applications and requests

Under the revised Article 148 IPC (amended by Article 7 of the Amendment Law), the IPTO has the authority to declare applications for patents, registrations, and renewals inadmissible under certain conditions:

i)    When the applicant’s identification or contact information is missing or inaccessible.

ii)    In the case of first trademark filings, in case of the absence of a trademark specimen or indication of the products or services.

iii)    For patents and utility models, for failure to pay applicable taxes within the non-extendible deadline of one month from the application date. 

(g)    Recording of documents in the IPTO register

The range of documents to be recorded in the IPTO register has been broadened to encompass agreements extinguishing IP rights and bankruptcy decisions concerning IP rights owners (Article 138 IPC, amended by Article 23 of the Amendment Law). Theaim is to make this information publicly accessible and thereby enforceable against third parties.

(h)    Priority request

The Amendment Law allows for a simplified procedure when filing a priority request. Now, it is possible to include only the unique code identifying the application which is the basis of priority, as provided by the relevant entity. This alternative procedure removes the need to attach a copy of the priority application to the priority request. This demonstrates the applicant’s name, entity, extension of rights, and the filing date (Article 169 IPC, amended by Article 13 of the Amendment Law).

(i)    Deadlines

The Amendment Law introduces, among other changes, a time-limit of up to six months for any request of an extension of a deadline provided by the IPC (Article 191 IPC, amended by Article 16 of the Amendment Law).

(j)    Taxes

Articles 229 and 230 IPC have been amended as outlined in Articles 29, 30, and 31 of the Amendment Law. Notably:

i)    In cases of trademark applications refused or withdrawn prior to registration, it is clarified that the amount reimbursed to the applicant will encompass government fees, except for those related to the first filing application and, if applicable, fees due for the letter of appointment. 

ii)    The IPC already allowed applicants that made an erroneous payment to rectify the error. The Amendment Law now states that any irregularities from previous years must also be addressed to be able to rectify the error.


Conclusions

Overall, the changes introduced by the Amendment Law are welcome because they further harmonize the law in Italy with the rest of Europe. Besides, businesses will find the processes for registering and enforcing registered IP in Italy easier and simpler going forward.

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