As a result of the vote taken by the Italian Parliament, Law no. 102 of July 24, 2023 revising the Italian Industrial Property Code (IPC) has been approved and will come into force on August 23, 2023.
The provision is part of the “Strategic Intervention on Intellectual Property”, adopted 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” – underlines Italian Senator Adriano Paroli- “and brings major changes to the current system, characterized by complex procedures. The revision aims to finance 254 additional projects intended for companies and research organizations.”
Inventions created in universities and research organizations
The approved changes on ownership of patentable invention rights reverse the current situation, where the researcher owns exclusive rights. Under the new text of Article 65 of the IPC, universities or research organizations shall hold the rights to the invention, unless the same organization doesn’t have interest in the same. Nevertheless, the right of the researcher to be recognized as author has been preserved.
The amended provision will also be applicable to privately owned universities, to scientific institutes for research, to hospital and health care facilities and bodies that carry out not-for-profit research activities.
Geographical indications and denominations of origin
The revised law strengthens the protection of geographical indications vis-à-vis trademark applications. Article 14 as amended excludes from trademark registration signs that evoke, usurp or imitate geographical indications and denominations of origin protected under Italian or European Law or by international agreements ratified by Italy or the EU. The Ministry of Agriculture may now also oppose trademark applications that are in conflict with geographical indications and denominations of origin when there is no governing body for said GI or denomination of origin.
Trademark registrations that include words, designs or elements that cause detriment to the Italian national image or reputation can be revoked.
Technology Transfer Offices
The new Article 65-bis allows university or research organizations to equip themselves with Technology Transfer Offices (TTO) in order to promote industrial property rights, also through the promotion of collaboration with companies.
Designs and models
According to the new Article 65-bis, designs and models displayed in official national or international trade fairs will be temporarily protected, in order to ensure that the disclosure of the design or model during the trade shows does not compromise the novelty requirement for registration.
Moreover, Article 129 IPC stipulated that if products displayed at official trade shows are suspected of infringing IP rights, law enforcement authorities cannot immediately seize the products, but merely draw up a description of them. The approved amendments repeal article 129(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 and Italian patents
The former text of article 59 IPC provided that when an Italian and European patent with effect in Italy were granted to the same inventor, the Italian patent ceased to have effect. From now on, the revision of the aforementioned article allows the Italian patent to maintain its effects and to coexist alongside the European patent, even in case of invalidity or revocation of the latter.
In addition to this, recordals carried out before the European Patent Office are now effective also in Italy.
Streamlining of the access to Intellectual Property Office
Following the amendments to Article 147 IPC, the obligation to send paper documents to the Italian Patent and Trademark Office has been abolished. A new provision has been furthermore issued to Article 147, allowing use of the e-filing system once the digital identity of the user is certified.
Acceleration of procedures and decisions
The term between the notification of the invalidity or revocation action to the parties and the hearing at the Board of Appeals has been reduced from 40 to 30 days.
