The law revising Italy’s Industrial Property Code came into force on 23 August 2023; 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.

The law revising the Italian Industrial Property Code (IIPC) was published in the Italian Official Journal No. 184 of 8 August 2023, and came into force on 23 August 2023 (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”).

The revision is part of the “Strategy guidelines on intellectual property” for 2021-2023 for the purpose of implementing the Italian National Recovery and Resilience Plan.

The amendments introduced by the revised 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.

Most of the proposals originally tabled in the draft (read more here) have been maintained. While many of the amendments concern procedural and administrative aspects, highlighted below are the changes of immediate interest for holders of IP rights.

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 can 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 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 previously provided that a researcher owned exclusive rights on the patentable invention of which he or she was the author, unless the invention was the result either of research funded privately (even only in part), or of specific research projects funded by a public body that was not the one employing the researcher.

Such provisions applied only to state-owned universities and research organisations.

The newly approved changes reverse the current situation: the university or research organisation holds 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 is entitled to file a patent application in his or her own name.

Moreover, the amended provision applies 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 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

Previously the IIPC’s Article 123(3) stipulated that if products displayed at official or officially recognised trade shows were suspected of infringing IP rights, law enforcement authorities could not immediately seize the products, but merely take down a description of them. Paragraph 3 has been repealed, so enforcement authorities can 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 revised 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

The revised Article 147 of the IIPC no longer obliges the Chambers of commerce to send paper documents to the Italian Patent and Trademark Office (IPTO), and simplifies access to the e-filing facility.

Appeals against IPTO decisions

Decisions of the Board of Appeals against decisions of the IPTO are 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), offers 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.