On July 18, 2023, the Italian Chamber of Deputies definitively passed Bill No. 1134 concerning amendments to the Italian Industrial Property Code as set forth in Legislative Decree No. 30/2005 (the “Bill”). This measure was included in the Strategic Guidelines for Industrial Property Reform and is part of the Digitization, Innovation, and Competitiveness of the Production System Mission of the Italian National Recovery and Resilience Plan. The objective of the Industrial Property Code reform wrought by the Bill is to strengthen Italy’s competitiveness by protecting and safeguarding industrial property while at the same time lightening administrative burdens and digitizing procedures for accessing protection for industrial products.
In pursuing these objectives, the Bill reforms various parts of the Industrial Property Code as outlined below.
Patent protection
Among the most significant changes, the Bill brings Italian law in line with that of many other countries by abolishing what is commonly known as “professor’s privilege.” To facilitate technology transfer to the production system and allow inventions to gain value, the reform initially allocates ownership of inventions created by research personnel at universities and research institutes to the relevant institutions, but then allows it to revert to the researchers if the institutions do not take action. In other words, under this amendment, a research institution either will have to file a patent application within six months of the invention or notify the inventor of its lack of interest, allowing the inventor to patent it personally.
In addition, the Bill introduced the possibility of paying patent application filing fees not only at the time of the filing, but also in the first month following the filing, which is of particular interest to businesses—including from an investment perspective.
Another highly anticipated important new feature concerns the coexistence of an Italian patent and a European patent for the same invention, possibly with unitary effect. 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 defense strategies, particularly following the launch of the Unified Patent Court, which has jurisdiction over European patents.
Design protection
With the objective of ensuring greater and advance protection for designs exhibited at trade fairs, the Bill introduces the possibility to apply for temporary protection for designs that appear in an official, or officially recognized, exhibition held in Italy or in the territory of a foreign state with reciprocal treatment agreements. Moreover, the temporary protection grants design registration priority, provided that the application is filed within six months of the date of exhibition of the designs or the products incorporating them.
Following the same rationale, the Bill also introduces the possibility of obtaining the seizure of counterfeit goods displayed in exhibitions.
Trademark protection
In addition to introducing various measures to simplify and digitize Italian Trademark Office administrative procedures, the Bill strengthens the “Made in Italy” safeguard and fosters enhancement of Italian geographical indications. Under the Bill, signs that are evocative, usurpative, or imitative of protected geographical indications and designations of origin cannot be protected as trademarks. The Italian Ministry of Agriculture, Food Sovereignty, and Forestry is specifically listed among the subjects entitled to file opposition to a trademark application or registration.
In conclusion, the approval of the Bill to reform the Industrial Property Code marks another step in promoting innovation and granting greater protection to intellectual property rights.
The Bill will enter into force shortly following its publication in the Italian Official Gazette. As it takes effect, it will be crucial to monitor implementation and assess impact on the protection of industrial property and the facilitation of technology transfer and innovation.
