Italy’s new law changes the Industrial Property Code

by Manzella Associati

On July 18th Italy’s Chamber of Deputy has approved the “Amendments of the Industrial Property Code set forth in Legislative Decree of 10 February 2005 No. 30”, which are 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. So what’s new in the law revising Italy’s Industrial Property Code? Important changes for IP right holders, regarding geographical indications and denominations of origin, the possibility to defer the payment of the payment for filing a patent application, inventions resulting from university research and the enforcement of IP rights during trade shows. Here are some of the changes of the new law:

– Double Patenting

One amendment concerns art. 59 IPC. In the old provision, European patents had prevalence in cases where an Italian patent and a European patent designating Italy or a European patent with unitary effect had been granted to the same inventor or his successor in title having the same application or priority dates . The new article 59 CPI introduces the idea of the double patent in Italy, providing for the possibility that the Italian patent retains its effects and coexists with a European patent.

– Universities and abolition of the “Professor’s privilege”

Another change concerns the inventions created within universities. The previous version of art.65 provided that the right to patent an invention, being the result of an employment relationship with a University, belonged to researchers

The new article 65 eliminates the so-called “professor’s privilege”, whereby when an invention is created in the context of an employment relationship with a university or a public research body, the rights to the patent belong to the institution., while the so-called “moral right” remains with the inventor, i.e. the inventor has the right to be recognized as the author of the invention.

The inventor is then obliged to share the invention with the research body, which can then decide whether or not to file the patent application. If the research organization does not file the patent application within six months, which can be extended by a further three months period, the researcher can do so independently in his own name. The same applies if the research institute informs the researcher that it is not interested in filing the patent application.

– Designations of origin and geographical indications

The reform strengthens the protection of designations of origin and geographical indications, prohibiting the registration of trademarks that imitate them, in accordance with EU regulation no. 1151/2012 now adopted in Italy. The new procedural process gives greater powers to the Ministry of Agriculture, responsible for issuing binding opinions on the conformity of signs with geographical indications. The IPTO must send to the Ministry specimens of trademarks related to agricultural and food products with geographical names, and the Ministry must respond within twenty days (art. 170 CPI, amended by art. 14 of the Amendment Law). Finally, companies without a recognized consortium can oppose the registration of trademarks through the Ministry of Agriculture, filling a previous gap that limited such rights only to consortium entities (art. 177 d-bis CPI).

– Designs

The Amendment Law introduces new provisions for the temporary protection of designs and models exhibited in official or officially recognized exhibitions in Italy or in countries with reciprocal convention. To benefit from this protection, a request must be submitted to the Ministry of Business and Made in Italy within six months of the start of the exhibition. Once accepted, this protection gives the applicant a priority status in the registration procedure, starting from the date of exhibition (art. 34-bis CPI, amended by art. 2 of the Amendment Law).

– New Procedural Rules

The Amendment Law introduced procedural rules to simplify processes and encourage digitalisation. Key revisions are implemented, including:

Seize of products at fairs: the law now allows the seizure of products displayed at fairs, repealing the third paragraph of Article 129 IPC. This change has significant implications for business, considering the importance of trade shows for visibility.

Nullity procedure: a new ground for nullity is introduced, which allows it to be requested due to the potential threat to the image and reputation of Italy (see art. 184bis.2a). It is prohibited to bring multiple invalidity actions against the same trademark, unless the trademark could be contested at the time of the action. The procedure includes a period, similar to that of the oppositions, with the possibility of reaching an agreement within two months. This period can be extended up to one year. In case of failure to reach an agreement, the trademark owner has 60 days to file a statement. Furthermore, the invalidity procedure can be extinguished in the event of abandonment of the trademark application.

Opposition Procedures: as previously mentioned, the Ministry of Agriculture can now initiate oppositions for geographical indications and indications of origin without a recognized consortium. The Amendment Law specifies that the two-month period for the IPTO to communicate the initiation of opposition proceedings (and the opportunity for an agreement within two months) does not apply if the opposition is suspended under Article 180 IPC or if an applicant files a limitation request requiring the IPTO to hear the opponent before continuing opposition proceedings (Article 178 IPC, amended by Article 25 of the Amendment Law).

Appeals Board: in proceedings before the Appeals Board, the office must now provide at least 30 days’ notice for the first hearing, reduced from the previous 40-day notice (Article 136 quinquies IPC, amended by Article 10 of the Amendment Law). Additionally, the term of service for th members of the same Board has been extended to four years from the previous two years (Article 135 IPC, amended by Article 9 of the Amendment Law).

Taxes: amendments to Articles 229 and 230 IPC outlined in Articles 29, 30, and 31 of the Amendment Law clarify that in cases of trademark applications refused or withdrawn before registration, the reimbursed amount to the applicant will cover government fees, excluding those related to the first filing application and, if applicable, fees due for the power of attorney. The Amendment Law emphasizes that applicants correcting erroneous payments must also address any irregularities from previous years.

Filing of Documents: original submissions to Chambers of Commerce or other IPC-designated entities will no longer be automatically transmitted to the IPTO within ten days. Instead, these entities will retain and transmit materials to the IPTO only upon request, made 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 related documents always transmitted to the IPTO. To promote digitalization, the Amendment Law allows digital identity authentication to supersede the need for digital signatures on filed documents.

Admissibility of Applications and Requests: under the revised Article 148 IPC, the IPTO can declare applications for patents, registrations, and renewals inadmissible under specific conditions. This includes situations where applicant information is missing or inaccessible, absence of a trademark specimen or product/service indication for first trademark filings, and non-payment of applicable taxes for patents and utility models within a one-month non-extendible deadline from the application date.

Recording of Documents in IPTO Register: the scope of documents recorded in the IPTO register now includes agreements extinguishing IP rights and bankruptcy decisions concerning IP rights owners (Article 138 IPC, amended by Article 23 of the Amendment Law) to enhance public accessibility and enforceability against third parties.

Priority Request: the Amendment Law simplifies the procedure for filing a priority request. Now, it’s possible to include only the unique code identifying the application forming the basis of priority, eliminating the need to attach a copy of the priority application to the request. This includes the applicant’s name, entity, extension of rights, and filing date (Article 169 IPC, amended by Article 13 of the Amendment Law).

Deadlines: among other changes, the Amendment Law introduces an extension up to six months for any deadlines which cannot be postponed, calculated from the original deadline (Article 191.2 IPC, amended by Article 16 of the Amendment Law).

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