Amendments to the Italian IP Code enter into force

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Law no. 102/23, amending the Italian Intellectual Property Code, was published on 8 August and will enter into force on 23 August. Below is a summary of the most relevant changes.

1.    Coexistence between national and European/Unitary patent

Art. 59 IP Code is modified, which provides for the cessation of the effects of an Italian patent in the event of the granting of a European/Unitary patent on the same invention by the same inventor with the same filing or priority date. Following the new provision, the Italian patent will instead:

i)               continue having effect and coexist alongside the European/Unitary patent;

ii)              continue having effect even in the event of the subsequent revocation of the European/Unitary patent.

This mitigates one of the drawbacks of the Unitary patent (i.e. European patent with unitary effect), namely the fact that its revocation takes effect in all Member States adhering to the system. In case of revocation of the same, in fact, the owner of the national patent will now be able to enforce it and continue to protect its invention in Italy.

2.    Overturning of the Professor's privilege

Art. 65 IP Code is also modified, which currently sets forth the so-called “Professor's Privilege ” by establishing that, contrary to what happens in private companies, in employment relationships with universities or public administrations which have research among their institutional purposes, the researcher is the exclusive owner of the rights to the patentable invention of which he/she is the author.

With the new provision the rights to the invention will, instead, belong to the entity for which the researcher works, except for the latter's right to be recognised as the author. The inventor will have to communicate the object of the invention to the entity, which will have 6 months (extendable by another 3 months) to file a patent application. Failing that, the inventor may file this application in his own name.

3.    Civil seizure at fairs

The new law withdraws the rule by which infringing products that are exhibited in or in transit from/to official exhibitions cannot be subject to civil seizure, but only to judicial search (Art. 129(3) IP Code).

This will clearly expand the possibilities of seizure at fairs, which are currently limited to specific cases where criminal seizures can be requested.

4.    Temporary protection of designs exhibited at fairs

A new art. 34bis is introduced in the IP Code, which allows the request for temporary protection for designs exhibited in officially recognised fairs in Italy or in another State that grants reciprocity. The protection will be granted by decree of the Ministry of Enterprise and Made in Italy. If, within 6 months of the exhibition date, an application for registration of the related design is filed, this will enjoy priority dating back to the exhibition date declared in the request for temporary protection and verified by the Italian Patent and Trademark Office.