The recent reform of the Italian Industrial Code: what’s new?

The following is a description of the most relevant aspects of the changes introduced to the Italian Industrial Property Code by the recently adopted Law n. 102/23.

New regime of ownership of inventions developed by researchers in universities and public research organizations

The most significant change concerns the regime of the ownership of the inventions created by researchers of the universities and public research organizations. According to the version of art. 65 of the Italian Industrial Property Code in force prior to the change, unlike for any other private or public employee, the exclusive rights to the patentable invention developed by a researcher employed by a university or a public research organization were allocated to the researcher, and not to the employer, even when the invention was the result of the activity carried out by the researcher in the performance of his/her inventive tasks. The rule (so called “professor privilege”), which had been introduced in 2001 with the aim of stimulating the research at university level, has been criticized since its adoption by several players including the universities which claimed that the regime affected their possibility to compete at international level with other universities.

The recently adopted reform reverses the rule by allocating the exclusive rights on patentable inventions created by the researcher while performing an employment contract with the university or the public research organization, to the entities to which the inventor belongs. In the lack of action by the university or the public research organization within six months (extendible by other three months) from receipt of the communication from the researcher of a patentable invention, the researcher shall be entitled to file a patent application in his or her own name.

The new rule is applicable not only to public universities, but also to privately owned universities recognized under Italian law, public research organizations, scientific institutes for research, such as hospitals and health care institutes, as well as to organizations that carry out research and promotion of technical-scientific knowledge on a non-profit basis. 

Coexistence of European patents (with unitary effect or not) and Italian patents

To remain in the patent field, another change which may have an impact for patent owners pertains to the relation between national patents and European patents covering the same invention. The new version of art. 59 of the Italian Industrial Property Code, reverting the previous rule, provides that when an Italian patent and an European patent valid in Italy (both a traditional one 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.

Putting off of payment of patent filing fees

Lastly, as far as patents are concerned, a change that puts an end to a competitive disadvantage for Italian patent applicants has been introduced: in case of filing of a patent application, the new law allows the putting off, for up to a month after the date of filing, of the payment of the filing fees. The change aligns the procedure before the Italian Trademark and Patent Office to the practice of most national and international patent offices.

Extension of the ban from registration to signs evoking, usurping or imitating geographical indications and denominations of origin

With the aim of strengthening the protection of geographical indications and denominations of origin, Law 102/23 has extended the ban from trademark registration on grounds of deceptiveness to signs which evoke, usurp, or imitate geographical indications and denominations of origin protected under Italian or European law or by international agreements.

Another significant change consists in the granting to the entities in charge of the protection of geographical indications and denominations of origin (that is the consortia) of the right to oppose national trademark applications. In the lack of a consortium, such right may be exercised by the Italian Ministry of Agriculture, Food Sovereignty and Forests.

Temporary protection for designs and models

Similarly to what is already provided for with regard to European Union designs, Law n. 102/23 introduced a provision aimed at excluding the risk of "pre-disclosure", a circumstance that deprives the design of novelty and consequently prevents its registrability, in case a design or a model is shown in an exhibition. Following the novella, it is now possible to request temporary protection of Italian designs and models that appear in an exhibition, official or officially recognized, held in the territory of the State or in the territory of a foreign State that grants reciprocity of treatment. This temporary protection lapses if the application for registration of the design is filed after the expiry of a period of 6 months from the date of exhibition of the designs.

Enforcing IP rights at official or officially recognized exhibitions

In its previous formulation, art.  129 par. 3 of the Italian Industrial Property Code provided that in case goods displayed at official or officially recognized exhibitions are suspected of infringing IP rights, law enforcement authorities could not seize them, but merely take down a description which will then be used for judicial purposes. The reform repeals the above-mentioned paragraph 3, and therefore it is now possible to ask the judicial authority to issue a seizure order to be executed through the enforcement authorities directly during the exhibition.

Cooling-off period in the trademark invalidity and revocation proceedings

Since the 9^th of December 2022, trademark invalidity and revocation proceedings can be brought, as well as in the courts, also before the Italian Patents and Trademarks Office. The introduction of such administrative proceedings has resulted in time and cost savings for trademark holders. Following the recent changes, in line with the opposition proceedings against trademark applications, the procedure now provides for a cooling-off period of two months in order to enable the parties to reach an agreement.