September 11, 2023

Reform of the Industrial Property Code effective August 23, 2023 - Practical implications for businesses

Starting August 23, 2023, several amendments to the Industrial Property Code (introduced by Law No. 102 of July 24, 2023) came into force. The legislator enacted these amendments to "strengthen the competitiveness of the country and the protection of industrial property" and to "simplify and digitize administrative procedures."
From a practical standpoint, the most significant change is the introduction of the possibility of requesting the seizure of counterfeit goods exhibited at trade fairs. Until now, during exhibitions at trade fairs, it was only possible to request a "description" in order to find and preserve evidence of the infringement. From now on, it will be possible to obtain the dispossession of the infringer through seizure, thus preserving evidence of the infringement and preventing the recurrence of the infringement (Article 22, Law No. 102 of July 24, 2023).

Trademarks
Among the most important innovations regarding trademarks, the prohibition on registering signs that evoke, misuse, or imitate protected geographical indications (PGI) and protected designations of origin (DOP, DOC, DOCG) has been established, consolidating a position already established by case law (Article 1). The Italian Patent and Trademark Office (UIBM) may now refuse to register trademarks that recall protected indications and names. Furthermore, with regard to protected indications and names, the Ministry of Agriculture, in the absence of a recognized protection consortium, may also defend these protected indications and names by filing oppositions against trademark registration applications (Article 15).

Designs
With regard to designs, the most significant change is the introduction of a system for obtaining temporary protection for designs exhibited at national or international trade fairs, aligning their legal protection to the date of exhibition (Article 2). In other words, if a specific model is exhibited at an exhibition, and that exhibition is listed in a specific decree of the Ministry of Enterprise and Made in Italy, a new application for registration of the relevant design may be filed within six months of the exhibition, claiming the priority date of the exhibition that occurred during the recognized event.

Patents
Regarding patents, a significant change is the possibility of both an Italian patent and a European patent validated in Italy or the Unitary Patent coexisting within the national territory for the same invention. Until now, when a European patent was validated in Italy, the Italian patent lapsed to the extent that it protected the same invention. Therefore, the changes introduced establish that, in the event that the European patent validated in Italy or the Unitary Patent is declared invalid or lapses (for example, following a lawsuit or failure to pay maintenance fees), the Italian patent continues to produce its effects and is therefore not related to the cancellation or lapse of the European or Unitary Patent (Article 5).
Still in the patent field, the new reform establishes that ownership of inventions by researchers at universities and public research institutions belongs to the researcher's organization, who has the right to be recognized as the inventor. Furthermore, with regard to research funded, in whole or in part, by an external entity, the rights deriving from such research must be governed by agreements between the funding entity and the university, based on guidelines that will be made available by October 22, 2023, or within sixty days of the law's entry into force (Article 3).

Further changes
Finally, for the sake of completeness, some of the additional changes introduced are reported:

  • Universities and higher education institutions in the arts, music, and dance, public research institutions, or IRCCS (Research Institutes and Research Centers) may establish (including in association) a Technology Transfer Office (UTT) with the function of promoting the valorization of industrial property rights (Article 4);
  • the penalty applicable to anyone who places untrue words or indications on an object, tending to imply that the object is protected by a patent/design or that the trademark is registered, has been increased (from €51.65-€516.46 to €150-€1,500) (Article 6);
  • in addition to those already provided for in Article 138 of the Italian Code of Criminal Procedure, inter vivos deeds that extinguish (in part or in full) rights to IP titles and bankruptcy decisions of IP rights holders must be registered with the UIBM for the purposes of enforcement against third parties (Article 23);
  • furthermore, a trademark invalidity action cannot be reinstated based on rights that could have been asserted in support of a previously filed application (Article 26);
  • verification of the validity requirements for a patent is also carried out for utility model applications if filed simultaneously with an application for a patent for an invention and in any case after receipt of the search report on the patent for an invention (Article 24);
  • with regard to the registration of deeds of transfer of IP rights, registration in the European Patent Register has direct effect; only in the absence of such registration is the registration at the Italian Patent Office valid for the purposes of third-party enforcement (Article 11);
  • the members of the Board of Appeal remain in office for four years, and the deadline between the parties' summons and the hearing before the Board of Appeal has been reduced to 30 days (Articles 9 and 10);
  • the requirement for Chambers of Commerce, offices, and authorized public bodies to submit paper documentation to the UIBM has been eliminated (Article 12);
  • the procedures for accessing and using the electronic filing system at the UIBM have been simplified (Article 12);
  • the procedural procedures for claiming priority for filing an application have been simplified, as it is sufficient to indicate a unique identification code (Article 13);
  • a unified deadline has been established for extending the deadlines for proceedings at the UIBM (Article 16);
  • the deadline for submitting requests for reinstatement of industrial property rights has been modified (Article 17);
  • the number of members of the examination board for qualification to practice the profession of industrial property consultant has been reduced from 8 to 7 (Article 18);
  • the mandatory training period for admission to the qualifying examination has been reduced from 18 to 12 months (Article 18);
  • in opposition proceedings in Italy, certain circumstances have been introduced in which the UIBM does not have to comply with the two-month deadline for making the first communication to the parties to the proceedings (Article 25);
  • the application for invalidity or revocation of a trademark is classified as an "application," and certain aspects of the procedure (including the cooling-off period) are specified (Article 27);
  • renunciation of the trademark is included among the causes for termination of the proceedings for revocation or invalidity of the trademark (Article 28);
  • the criteria for the reimbursement of fees and duties pursuant to Article 229 of the Italian Code of Criminal Procedure are specified (Article 29);
  • payment of filing fees for a patent application for an invention or utility model must be made within one month of the filing date of the application (Article 7);
  • stamp duty amounts have been changed (Article 31):
  1. Trademark filing: €48 (no longer €42),
  2. Patent filing for inventions, utility models, and designs: €16 (no longer €20), for letters of assignment, requests for certified copies of the filing report, and issuance of certified copies of the filing report,
  3. Requests for transcription and related attachments: €80 (no longer €85),
  4. Requests for annotations (and for all applications other than those mentioned above): €16 (no longer €15);
  • the deadlines for exercising ministerial preventive control on applications concerning objects that could be useful for the defense of the country have been increased from ninety to sixty days, and, at the same time, the scope of cases subject to preventive control has been expanded (Article 8);
  • the procedure for granting new plant varieties has been simplified, with the elimination of the previously established Commission (Article 14);
  • for trademarks relating to agricultural products and first-stage agri-food products that contain or consist of geographical designations, the opinion requested from the Ministry of Agriculture becomes binding under the reform (and must be issued within 20 days); furthermore, the Ministry is required to issue a further binding opinion to determine whether the word, figure, or sign for which registration as a trademark is sought constitutes the usurpation, imitation, or evocation of geographical indications or indications of origin (Article 14);
  • international applications designating Italy with a filing date prior to the filing of the patent application and a publication date subsequent to that filing are also included among the prior art (Article 19);
  • the duration of patents (for both industrial inventions and utility models) is specified, with the exact expiration (after twenty and ten years, respectively) occurring at the expiration of the last instant of the day corresponding to the filing of the application (Article 20);
  • the provisions relating to supplementary protection certificates governed by Law No. 349 of 1991 (already repealed) are repealed. These certificates had a longer duration than the five-year period established by European legislation (Article 21).

We remain at your complete disposal for any further information or details.

Luca Gallo – Gaia Salvatici

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