Approval of the DDL relating to amendments to the Industrial Property Code
On 18 July 2023, the Chamber of Deputies definitively approved the DDL which dictates changes to the industrial property code. This measure is part of the National Recovery and Resilience Plan (PNRR), which provides for the adoption of a reform of the Industrial Property Code and implementation tools by the third quarter of 2023.
The bill coordinated by the Ministry of Business and Made in Italy modifies several points of the old 2005 Code, with the aim of strengthening the competitiveness of the country’s businesses and research institutions, encouraging the use of industrial property and simplifying the administrative procedures for the protection and defense of industrial property rights. The changes made will come into force following the publication of the provision in the Official Journal.
Among the main innovations, in addition to a strengthening of the protection of geographical indications and designations of origin, the reversal of the so-called mechanism professor’s privilege, i.e. the transfer of rights linked to the invention from researchers to the structures they belong to, therefore universities, public research bodies and centres, scientific hospitalization and treatment institutes (Irccs).
Below we report the most interesting news:
Inventions by researchers at universities and public research bodies
The legislation currently in force, applicable only to state universities and public research bodies, provides that the researcher is the exclusive owner of the rights deriving from the patentable invention of which he is the author, except in the case of research financed, in whole or in part, by private entities or carried out as part of specific research projects financed by public entities other than the university, body or administration to which the researcher belongs.
The definitively approved provision overturns the logic of the current legislation. The rights deriving from the invention will belong to the structure to which it belongs if the invention is created in execution of a contract, work or employment relationship (even for a fixed term), with a university or public research body, or in the framework of a agreement between the same subjects. In the event of inaction by the university or public body for six months (extendable for a maximum of three months), the inventor will be able to proceed with filing a patent application in his or her name.
The new provisions will also apply to legally recognized non-state universities, scientific hospitalization and treatment institutes (IRCCS) and organizations carrying out non-profit research activities.
Coexistence of the Italian patent with the European patent and with the European patent having unitary effect
Article 59 of the CPI currently provides that: “if for the same invention an Italian patent and a European patent valid in Italy (or a European patent with unitary effect) have been granted to the same inventor or to his successor in title with the same filing or priority date, the Italian patent, to the extent that it protects the same invention as the European patent (or the European patent with unitary effect), ceases to produce its effects”.
The modification introduced instead means that, in the event that for the same invention proposed by the same inventor, an Italian patent and a European patent valid in Italy (or a European patent with unitary effect), having the same filing or priority date, the Italian patent maintains its effects and coexists with the European patent.
Payment of storage fees
To promote the protection of the industrial product, especially in support of SMEs, the possibility of paying the patent application filing fees has been introduced not only at the same time as the filing itself, but also subsequently. The payment of filing fees for the patent application can therefore be deferred up to one month after filing, maintaining the filing date.
Temporary protection for designs and models
With the changes made to the Code it will be possible to receive temporary protection for designs and models exhibited at national fairs, in order to trace their legal protection back to the date of exhibition.
Geographical indications and designations of origin
The changes made to the Code will prohibit the registration as trademarks of signs that evoke, usurp or imitate geographical indications and designations of origin protected by Italian law, by European Union regulations or by current international agreements; furthermore, the owners of protected geographical indications and designations of origin will be able, following the entry into force of the provision, to lodge an opposition to the registration of a trademark even in the absence of protection consortia recognized by law.
Nullity and revocation of trademarks
The nullity and forfeiture procedure, in force from 29 December 2022, is further defined, with the provision of the possibility for the parties, following verification of the admissibility and admissibility of the request by the UIBM, to reach a conciliation agreement within two months from the date of communication of the request itself (extendable, upon joint request of the parties, up to a maximum of one year).
Fighting counterfeiting at trade fairs
The changes to the CPI also aim to strengthen measures to combat counterfeiting at trade fairs. In fact, currently the art. 129 c.3 IPC provides that in the event of suspected counterfeiting of products exhibited at official or officially recognized fairs, the police can proceed only to describe the suspected products, without the possibility of seizure on the spot.
With the changes made to the Code, this paragraph has been repealed, which will allow the police to immediately seize the products pursuant to a provision of the competent court, based on the suspected infringement of intellectual property rights.
Appeals against the provisions of the Italian Patent and Trademark Office
The timing of proceedings at the Appeals Commission against UIBM provisions is accelerated, with the reduction from forty to thirty days of the deadlines for convening the parties to a hearing before the Appeals Commission. The term of office of the Commission itself also increases from two to four years.
Reduction of paper documentation, simplification of access to electronic filing
An amendment to Article 147 of the CPI eliminated the obligation to transmit paper documentation from the Chambers of Commerce to the Italian Patent and Trademark Office (UIBM), as well as simplifying access to electronic filing. Furthermore, when claiming priority, as an alternative to depositing a copy of the documents, the indication of identification codes present in databases where the Uibm can directly verify the contents of the file will be permitted.
Preventive control on patent applications
The amendments made to Article 8 of the IPC strengthen preventive control over patent applications useful for the defense of the State. Specifically, the scope of application of the prohibition on filing the application in the absence of ministerial authorization extends to two cases:
1- if the inventor works at Italian branches of multinational companies whose parent company has its registered office abroad;
2- if the inventor sold the invention covered by the patent before filing.