Genesis and objectives of the reform
The recent bill (Disegno Di Legge, DDL) amending the Italian Industrial Property Code (IPC), approved by the Council of Ministers on 6 April 2022, represents a concrete achievement of the Strategic Lines of Intervention on Industrial Property for the three-year period 2021-2023, which, after a public consultation, were formally adopted by decree of the Minister of Economic Development on 23 June 2021.
As highlighted in the technical-regulatory analysis, the DDL is part and parcel of the reform of the industrial property system that features among the missions of the National Recovery and Resilience Plan (NRRP), approved by the Council of Ministers itself on 29 April 2021; and it is furthermore consistent with the Action Plan on Intellectual Property to strengthen EU's Resilience and Recovery, adopted by the European Commission on 25 November 2021.
The key-objectives of the reform package are to strengthen the protection of industrial property and the competitiveness of the country system (also taking into account the criticalities arisen during the Covid-19 pandemic), as well as to ensure administrative simplification and digitalization of procedures concerning IP rights.
The DDL consists of 31 articles, divided into three chapters: chapter I - Strengthening the competitiveness of the country system and protection of industrial property; chapter II - Administrative simplification and digitization of procedures; chapter III - Coordination and adaptation rules. Single articles contain amendments to specific provisions of the IPC.
Let us now take an overview of the main changes to be introduced by the reform.
- Overturning the “Professor privilege” mechanism
The DDL radically affects the legal regime of ownership with respect to inventions made within universities and research entities, essentially reversing its approach.
Pursuant to the current version of Article 65 IPC, except in the case of privately funded research or specific research projects financed by public entities other than the university, entity or administration to which the researcher belongs, the exclusive ownership of the rights deriving from the patentable invention is attributed to the researcher who created it (so-called Professor privilege). The university/entity/ administration is (only) entitled to a certain percentage of the fees or income deriving from the exploitation of the invention, as well as to a free, non-exclusive license to exploit the patent in case of voluntary inaction by the inventor (or his assignees/ successors) once five years have passed since the patent grant.
This rule was much criticized by the legal literature, since it leaves the future of the invention in the hands of the researcher, who as a rule is not interested in investing in the patentability assessment and patenting process, and/or does not have the resources to do so. Thus, the present regime would lend itself to jeopardize development, inasmuch as it may generate a risk for the invention to remain unimplemented.
The reform introduced by the DDL, substantially in the same as a number of other EU jurisdictions, attributes the ownership of inventions made by researchers, in the first place, to the entity (university or research body) to which they belong, without prejudice, of course, to the inventor’s moral right to be recognized as the author. Only in case of inaction on the part of the university/research entity, the ownership of the invention will vest in the researcher.
More particularly, pursuant to the DDL, the inventor must promptly inform the university/research entity of the subject-matter of the invention, and both parties are expected to safeguard the novelty of the same refraining from disclosing or making it accessible to the public. If - within six months from receipt of the inventor’s communication - the university/research entity has neither filed a patent application nor informed the inventor of its lack of interest in doing so, then the latter is entitled to file the patent application in his/her own name, after notifying the university/research entity thereof in writing.
Some aspects which in the past did lead to uncertainties at the operational level are more precisely defined, in particular with respect to the type of personnel and entities involved. The new provisions will apply "... when the industrial invention is made in the execution or performance of a contract, of a work or employment relationship, even if for a fixed term, with a university, a public research entity or a scientific institute for research, hospitalization and healthcare (IRCCS), as well as in the framework of an agreement between the same parties ...". It will also apply to “… legally recognized non-state universities
and organizations carrying out activities of research and promotion of technical-scientific knowledge for non-profit purposes …”. Thus, the subjective perimeter of art. 65 is identified in greater detail.
In the same way as the current text of the article, also the new version addresses the issue of team inventions, i.e. inventions achieved by more persons. Unless otherwise agreed, the rights arising therefrom will belong in equal parts (no longer to all authors - public employees, but) to all the universities/research entities involved.
On the whole, the DDL swings the balance from an individual to an institutional ownership model, which is ultimately supposed to encourage the transfer of innovative technologies from the world of universities/research to that of business. At the same time, certain issues are expressly left to the freedom and autonomy of the university/research entity, such as - to a certain extent - the reward to researchers for their inventive activity.
In relation to the allocation of the fees/income derived from the
economic exploitation of the invention, the DDL provides that the inventor is entitled, in any case, to not less than 50% thereof, after deduction of the costs borne by the university/research entity in connection with patent filing, registration and renewal. On the other hand, the remuneration of the university/research entity concerned, unless and until the same has autonomously regulated relations with inventors and rewards for their inventive activity, does not exceed 30%.
- Other changes in the field of patents and technology, to enhance competitiveness and IP protection
The DDL provides for the insertion into the IPC of a specific provision dedicated to Technology Transfer Offices (TTOs).
Pursuant to new art. 65-bis IPC, university institutions, institutions of higher education in art, music and dance, public research entities and IRCCSs will be able (within the resources available under current budget legislation, also in associative form) to create a Technology Transfer Office. The TTO would have the mission of promoting the valorization of industrial property rights, also through collaboration with businesses, and engage professionally qualified staff suitable for that purpose.
Other changes concern the payment of fees due for patent filing before the Italian Patent and Trademark Office (UIBM).
More particularly, the revised art. 148 IPC will allow the payment of filing fees not only at the same time of the application, but also subsequently, within one month. In case payment is not made at the same time as the application but within the extended term (which will not be further extendable), the filing date would be maintained as such instead of being postponed to the payment date. Failing payment within the one-month term, the application will become inadmissible.
As explained in the report annexed to the DDL, this provision will align the Italian system to those of many European jurisdictions, the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO). Since competition on patent protection is based on the “first-to-file” principle, clearly the underlying purpose is to eliminate a competitive disadvantage for – not unfrequently Italian - companies which file patent applications in Italy (before the UIBM).
Furthermore, the DDL amends art. 198 IPC, which concerns the preventive ministerial control on patent applications relevant to national defense, essentially strengthening such control.
Under the current version of art. 198 IPC, entitled "Procedures of military secrecy", in case of patents for inventions, utility models or topographies concerning objects that could be useful for national defense, persons residing in the territory of Italy are not allowed to file applications with patent offices of foreign states, the EPO or the WIPO without the authorization from the Ministry of Economic Development (to be given with prior consent of the Ministry of Defense). The application can be filed with foreign or supranational offices once 90 days have elapsed from the filing date in Italy, or from the date on which the authorization was requested (with a deemed consent mechanism, in case the Administration does not object or reply).
New art. 198 IPC will reduce from 90 to 60 days the term to obtain the ministerial authorization, thus accelerating the process. Besides, it will extend the cases subject to prior control, making the ministerial authorization required also (i) when the inventor operates within Italian subsidiaries of multinational companies whose parent company has its registered office abroad, and (ii) when
the inventor has assigned the invention covered by the patent before the filing of the application.
- Strengthening geographical indications and designations of origin
In support of the food industry, a key- sector of Made in Italy, the DDL makes certain amendments to the IPC aimed at strengthening the protection of Italian and EU geographical indications and designations of origin.
First, a specific ban will be introduced on the trademark registration of “… signs that are evocative, usurpative or imitative of protected geographical indications and designations of origin, pursuant to State or Union legislation, including international agreements to which Italy or the European Union are party …”. This language, preceded by the conjunction “, as well as”, will be inserted at the end of art. 14, para. 1, letter b), IPC, currently stating: “… 1. The following cannot be registered as trademarks: … b) signs that are liable to deceive the public, in particular as to the geographical origin, the nature or quality of goods or services, or the type of trademark …”.
As a consequence of art. 184-bis, para. 3, letter a), IPC on the filing of a (revocation or) nullity request before the UIBM, which currently refers, among others, to art. 14, para. 1, lett. b), against a trademark registration that violates the aforesaid ban a nullity administrative procedure will also be available, following a motivated request addressed to the Office, without prejudice to the ordinary nullity action before the judicial authority.
A further change introduced by the DDL will extend the range of persons entitled to file an opposition against a trademark application/registration - in the absence of a protection consortium recognized under the relevant laws - also to the Ministry of Agricultural, Food and Forestry Policies (MiPAAF), as the competent national authority for protected designations of origin and geographical indications of agriculture, food, wines, aromatized wines and spirit drinks.
An addition in such sense will be made to letter d-bis) of art. 177, para. 1, IPC, which presently allows the filing of oppositions only by “… entities entitled to protect the rights conferred by a designation of origin or geographical indication …”; hence, recognized protection consortia.
As highlighted in the report and analysis annexed to the DDL, this amendment serves the purpose of filling a current gap in the system. As it were, according to official data available as at February 2022, at present only 285 protection consortia have been recognized, against as many as 875 Italian geographical indications (DOP, IGP and IG) registered under EU legislation. As a result, in the absence of a recognized consortium, at the moment there is no entity entitled to file an opposition against a conflicting trademark.
- Introduction of provisional design protection in official trade fairs
The DDL provides for the introduction of new art. 34-bis IPC, which will supply an ad hoc remedy against the pre-disclosure of a design or model in the specific context of official trade fairs, a common enough occurrence, which is capable of destroying the novelty of the design/model concerned as a requirement for its registration.
More particularly, under the new provision, interested parties will be able to apply for provisional protection of designs or models that feature in an official or officially recognized exhibition, held in Italy or on the territory of a foreign country that grants reciprocity of treatment. Such protection, accorded by decree of the Ministry of Economic Development, will recognize priority to the application for the design/model registration, provided that the application is filed within 6 months from the date of display of the designs/models or the relevant products (incorporating them or to which they are applied).
Draft new art. 34-bis IPC moreover specifies that the priority therein referred to goes back to the date of display declared in the application for provisional protection as verified by the UIBM. Should more identical designs obtain provisional protection on the same date, priority will be recognized to the design/model for which the application was filed first.
- Simplification or digitalization of certain procedures before the Italian Patent and Trademark Office (UIBM)
Likewise as an output of the aforementioned public consultation, it transpired that the current filing and prosecution system is still not very easily accessible. Rather, it is often characterized by burdensome procedures, no longer in line with the digital era. Therefore, the need was felt for legislative interventions able to ensure a greater extent of simplification and digitalization.
Here follows a summary list of the main measures envisaged in that direction.
- The possibility to use the online filing system of the UIBM will be extended, by adopting the rule whereby access and use of such system is in any case allowed on the sole condition that the user's digital identity is established, thus dispensing with the current need for the user to have and utilize a digital signature.
- In the case of filing (of applications, claims, appeals, etc.) with Chambers of Commerce, the general obligation of the latter to forward paper documents to the UIBM will be repealed, and Chambers of Commerce will rather be required to keep the original documentation received and transmit it to the UIBM only upon specific request from the Office.
- The procedure to claim priority will be simplified, allowing the use of certain digital services made available from foreign Offices. In particular, when claiming priority, it will be possible, as an alternative to filing a copy of the relevant document, to indicate a univocal identification code present in databases from which the Office can directly verify the content. As explained in the report annexed to the DDL, this change should eliminate, amongst others, the obstacle that currently prevents Italy from joining the WIPO Digital Act Service (DAS), allowing the secure exchange of priority documents among the participating national intellectual property offices.
- The term of office of the UIBM Appeal Board will be extended from 2 to 4 years, with the aim to ensure continuity and effectiveness in its functions and reduce the relevant administrative burdens.
- In order to accelerate proceedings before the Appeal Board, the number of clear days between the hearing for the summoning of the parties and the previous notice from the secretariat will be reduced from 40 to 30.
- For the purpose of effectiveness vis-à-vis third parties of acts that transfer, in whole or in part, or modify rights inherent to a European patent or patent application, recordal in the European Patent Register will suffice, and registration with the Italian Register of European Patents will be required only in the absence of the EPO recordal. The underlying rationale is to avoid unnecessary duplication of administrative requirements.
- The procedure for registration of new plant varieties will be streamlined, in particular by suppressing the Advisory Commission currently foreseen by Article 170 IPC, in relation to the binding opinion on the technical validity requirements (preparatory to registration) which is attributed to the MiPAAF.
- In order to avoid interpretative uncertainties, an amendment will furthermore be introduced to art. 191 IPC on the possible extension of (non-mandatory) time limits upon request to the UIBM. The second paragraph of this article will be rephrased, clarifying that the extension may be granted up to a maximum of 6 months from the expiry of the term for which extension is sought.
- As concerns in general the remedy of reinstatement, which allows the preservation of IP rights in specific circumstances, an amendment will be made to the provision on the time limit within which the relevant request can be filed, so as to ensure greater clarity and legal certainty.
- Finally, the composition of the examining commission for the profession of industrial property consultant will be made lighter (by reducing the number of members from 8 to 5), and the mandatory internship period for admission to the qualifying examination will be reduced (from 18 to 12 months).
- Certain provisions of coordination and adaptation
The last chapter of the DDL contemplates a variety of coordination and adaptation interventions.
In the field of patent protection, it is worth mentioning, amongst others, the express inclusion of prior international patent applications designating and having effect in Italy within the contents that are encompassed in the state of the art, which must be considered by the UIBM in assessing the novelty of a patent. An appropriate addition will be made to art. 46, para. 3, IPC, which currently refers (only) to Italian patent applications and applications for European patent designating Italy, filed before the application date of the patent in question and published or made available to the public on that date or later.
Another proposed amendment, aimed at overcoming an interpretative doubt that had arisen in practice, clarifies the final term of duration of patents for industrial invention (art. 60 IPC) and utility model (art. 85 IPC). The new version expressly specifies that such duration (respectively of 20 and 10 years from the date when the application is filed) ends with the expiration of the last instant of the day corresponding to that of filing of the application.
Letter b) of art. 170, para. 1, IPC, on the examination of patent application, will be likewise amended “… in order to provide that, in cases of alternative patenting, i.e. in cases where an application for a patent for industrial invention, not granted in whole or in part, has been converted into a patent application for utility model, the effects of the search report, produced in the examination procedure of the patent application for an industrial invention, are extended to the utility model patent, insofar as this is compatible with the provisions of the code on this type of patent. Since this is, in fact, documentation already held in the Office's files, the same Office cannot ignore it for the purposes of the complete examination of the utility model patent application as well…”
Certain articles of the IPC on Supplementary Protection Certificates (SPCs) will be suitably modified as well. In particular, the DDL will eliminate obsolete references to SPCs provided under Law no. 349 of 19 October 1991, already repealed by art. 246 IPC (for those SPCs, which are no longer in existence, the domestic law provided a longer duration than the five-year catch-all term provided by uniform EU law).
With further reference to trade fairs, the DDL foresees the abrogation of present art. 129, para. 3, IPC, whereby, in case of infringement put in place through products exhibited at an official or officially recognized fair taking place in Italy (or that are in transit from/to the same) at present it is not possible to proceed to their seizure, but only to their judicial description, without prejudice to seizures ordered under criminal law.
The abrogation will ensure a more effective protection of IP rights during trade shows, without having to wait for the possible institution of criminal enforcement and in that way reducing the risk of late intervention. This purpose is expressly highlighted in the report annexed to the DDL, where it is also pointed out that: “… in the fair sector, especially as a consequence of the pandemic, trade fairs themselves have become hybrid, resulting in the simultaneous presence of digital catalogues together with physical displays of products: if it is possible to obtain seizures and injunctions for digital catalogs and, for contents made available online in violation of rights, it is appropriate to provide an analogous rule for the physical part of the fair …”.
Moreover, the DDL foreshadows the addition of a new ground for claiming the nullity of a trademark, by way of the administrative procedure before the UIBM and without prejudice to the judicial invalidity action: namely, in case of non-compliance with art. 10, para. 1-bis, IPC, which precludes registration of words, figures or signs undermining Italy’s image or reputation.
Besides, similarly to proceedings for EU trademark nullity and revocation before the European Union Intellectual Property Office (EUIPO), the prohibition to split nullity and revocation claims will be introduced. More particularly, the holder of one or more prior rights who has first claimed the revocation or invalidity of a trademark will not be allowed to file, on pain of inadmissibility, a further application for revocation or invalidity based on a different right that could have been relied on in the first application.
The list of draft changes contained in the DDL moreover includes, in particular:
- broadening the range of cases where registration with the UIBM is required for the purposes of effectiveness vis-à-vis third parties, thus strengthening the system of publicity of deeds concerning IP rights and legal certainty;
- re-arranging the preliminary phase of trademark opposition proceedings, for the sake of procedural economy;
- redefining phases and terms of revocation and nullity proceedings before the UIBM, along the lines of opposition proceedings; the waiver of the challenged trademark will be included among cases of extinction of revocation or nullity proceedings;
- re-defining the criteria for reimbursement of taxes and fees, with an express provision to the effect that the regularization of annual fees for the maintenance of IP rights is subject to a late payment fee for each incomplete or irregular annuity;
- modifying the amounts due as stamp duty for applications for grant/registration filed electronically, in order to extend the use of the so-called “digital stamp”.
Last but not least, the DDL foresees consistent amendments to the Implementing Regulation of the IPC , through a decree to be adopted by the Minister of Economic Development which will update, further digitalize, simplify and make UIBM procedures more efficient.
The DDL was placed before the Parliament: on 30 June 2022 it was assigned to the 10th Committee (Industry, trade, tourism) of the Senate.
The UIBM itself has been giving due emphasis to the DDL, as well as to other measures recently adopted in the wake of the aforesaid IP Strategic Lines of Intervention, namely the reopening for 2022 of the Brevetti+, Marchi+ and Disegni+ (Patents+, Trademarks+ and Designs+) vouchers, as a support to small and medium enterprises for the valorization of their IP rights.
Whilst there is some room for improvement of the DDL, there is consensus that its provisions, whether made into law by the incumbent or the next Legislature, amount to a significant and ambitious step forward, towards the much needed modernization and digitalization of the Italian IP system.