The reform of the Italian IP Code
Written By
Senior Associate
Italy
I specialise in multi-jurisdictional contentious patent matters, with a particular focus on Life Sciences & Healthcare and the Tech & Comms sector.
By Law no. 102/2023, which entered into force on 23 August 2023, the Italian IP Code was amended to strengthen the protection of IP rights and to simplify the procedural aspects of registering and enforcing those rights.
As to patents, the most relevant changes are the following:
Coexistence between national and European/Unitary Patent (Article 59 IP Code)
The previous rule provided that an Italian patent became ineffective in the case of grant of a European patent for the same invention filed by the same inventor with the same filing or priority date.
The new Article 59 provides for the possible co-existence of an Italian Patent and European/Unitary Patent.
This change is very important because it allows the patentee to enforce the national patent before the Italian Court and/or the European/Unitary Patent before the Unified Patent Court (“UPC”).
However, unlike other EU Countries, the amended Article 59 does not provide any specific mechanism of coordination between the national action and UPC action.
End of “professor’s privilege” (Article 65 IP Code)
The previous rule provided that the researcher is the exclusive owner of the rights to patentable inventions developed in the course of an employment relationship with a university or a public research institution.
The new Article 65 provides that rights to the invention belongs to the entity for which the researcher works, except for the latter's right to be recognised as the author. The inventor must communicate the object of the invention to the entity, who will have 6 months (extendable by another 3 months) to file a patent application. Failing that, the inventor may file this application in his/her own name.
Moreover, Article 65-bis provides that the entities may establish Technology Transfer Offices.
In conclusion, this change is relevant because it abolished the “professor’s privilege”, as has already happened in most of the EU Countries, and it is aimed at encouraging and exploiting the IP rights.
Seizure of products at fairs (Article 129 IP Code)
The previous rule prohibited seizure at fairs and permitted only the “descrizione” (a measure to collect evidences of the infringement, similar to the UPC order to preserve evidence or to French saisie-contrefaçon).
The new Article 129 also allows seizure at fairs, providing a more effective tool against infringers.
Expiry of the patent (Article 60 IP Code)
Article 60 has been amended to specify that the patent lasts 20 years and expires “with the expiration of the last instant on the day corresponding to the day of filing of the application”.
This amendment could appear “insignificant”, but it has clarified an issue debated in other EU Countries as well.