IP in Italy: major changes to Intellectual Property Code unveiled

December 2023  |  FEATURE | INTELLECTUAL PROPERTY

Financier Worldwide Magazine

December 2023 Issue

On 23 August 2023, major revisions to the Italian Intellectual Property Code became effective. The changes are designed to streamline procedural aspects of registering and enforcing intellectual property (IP) in the digital age, and to strengthen protection of certain IP rights.

The Code has introduced several major changes around university staff inventions, the Italian double patenting regime and the introduction of a temporary protection for designs. These changes have been implemented to further harmonise Italy’s laws with the rest of Europe and to simplify the process for businesses of registering IP and enforcing it in the country.

Aims

The measures are intended to help Italian companies to compete globally.

They were introduced as part of the ‘Strategic Intervention on Intellectual Property’, adopted by the Italian government in 2021 for the purpose of implementing the Italian National Recovery and Resilience Plan (INRRP). “The revised law is among the laws connected to the INRRP and brings major changes to the current system, characterised by complex procedures,” said Adriano Paroli, a senator. “The revision aims to finance 254 additional projects intended for companies and research organisations.”

The Italian IP framework is largely contained within the Intellectual Property Code (IPC). However, aspects of the IPC relating to registered and unregistered IP rights, excluding copyright, have been substantially amended by Law No. 102 of 24 July 2023, which came into force a month later. These amendments streamline IP registration and enforcement procedures and strengthen IP protection, particularly for rights critical to preserving Italian intangible assets.

Key provisions

With respect to geographical indications and designations of origin, under article 14 of the IPC, as amended by article 1 of the Amendment Law, the registration of trademarks that evoke, misuse or imitate designations or indications will be blocked. The amendment brings Italian regulations in line with article 13(b) of Regulation (EU) No 1151/2012, which had not been previously implemented in Italy.

The Ministry of Agriculture, Food Sovereignty and Forestry will also be strengthened by the amendments, via a new procedural guideline which should exert greater control over designations of origin and geographical indications, affording much wider powers to the ministry.

Companies using designations of origin and geographical indications that are not represented by a consortium which has been formally recognised have been assisted by the amendments. Under the revised IPC, such companies can now begin opposition proceedings against trademark registrations through the Ministry of Agriculture. These measures were not included in the original IPC, which prevented many companies that utilised designations of origin and geographical indications from enforcing their rights under the IPC in the absence of a recognised consortium, as the law only allowed those entities to start an opposition in defence of designations of origin and geographical indications.

Following the amendments, designs and models displayed in national or international trade shows will receive temporary protection to make protection under IP laws run from the date of display. This change has been introduced to prevent the disclosure of a design or model during a trade show from destroying registrability requirements. The amendments also introduce the possibility of seizing counterfeit goods displayed at exhibitions.

Changes will also be made to patent filing fee payments. This amendment will allow parties to defer payment of the filing fee for a patent application for up to a month after the date of filing. This change will bring Italy in line with other regions. Previously, Italian patent applicants were at a competitive disadvantage as many national and international patent offices permitted applicants to defer the payment of the filing fee.

Another highly anticipated and important new feature concerns the coexistence of an Italian patent and a European patent for the same invention, possibly with unitary effect. Going forward, the Italian patent will remain valid and effective even in the event of cancellation or forfeiture of the corresponding European patent. This will have repercussions for judicial patent defence strategies, particularly following the launch of the Unified Patent Court, which has jurisdiction over European patents.

The amendment will also impact paperwork and the availability of e-filing. The obligation for chambers of commerce to send paper documents to the Italian Patent and Trademark Office (IPTO) has been scrapped and the appeals process has been streamlined. Furthermore, the decisions of the board of appeals against decisions of the IPTO will also be quicker, as the term for summoning parties has been reduced from 40 to 30 days. The term of office of the board has also been extended from two to four years.

In addition, improvements have been made to the trademark invalidity and revocation procedure which came into effect on 29 December 2022. Parties now have the option to reach a conciliation agreement within two months from the date of communicating the request, subject to the IPTO verifying eligibility and admissibility requirements. The two-month period may be extended up to a maximum of one year on joint request of the parties.

The revisions to the Code are significant and will go a long way toward ensuring that Italy’s IP protections are commensurate with the rest of Europe, while also promoting innovation and granting greater protection to IP rights in the country.

© Financier Worldwide

BY

Richard Summerfield