Prepared by Paola Furiosi and Alice Minisini
1. The Origin and Purposes of the Reform
On 6 April 2022, the Italian Council of Ministers approved, on the proposal of the Minister for Economic Development Giancarlo Giorgetti, the draft law amending the Italian Industrial Property Code (I.I.P.C.) issued by Legislative Decree no. 30 of 10 February 2005.
The amendment is part of the set of measures concerning industrial property that has recently interested the Italian and supranational debate. In fact, on 25 November 2020 the EU Commission’s Action Plan “Making the most of the EU’s innovative potential – An intellectual property action plan to support the EU’s recovery and resilience” was released. From the above-mentioned Plan, the Strategic Intervention Guidelines on Industrial Property for the three-year period 2021-2023 were drawn up by the Ministerial Decree of 23 June 2021 after a public consultation.
The Guidelines represent the first measure for the implementation of the National Recovery and Resilience Plan in Italy, which also includes the reform of the industrial property system’ to which €30 million have been allocated as extraordinary funding.
In this context, the draft law, if it passes the parliamentary scrutiny, could play the role of cornerstone and constitute the first basis of this Strategic Plan for the reform of industrial property, in concert with the allocation of incentives for the filing of patents, trademarks and designs already provided by the tenders Patents+, Trademarks+ and Designs+.
All of the mentioned measures express a specific and no longer negligible need, namely to encourage and enhance innovation as a driver of economic growth and industrial development, without ignoring, at the same time, the ever-changing historical and social framework in which they take place. Within this framework, in particular, the rapid technological evolution plays a major role, to which it is necessary to provide a rapid and simplified regulatory and procedural response.
As explained in a note published by the Italian Ministry of Economic Development, the amendments introduced by the considered measure constitute an organic intervention to protect industrial property that aims at strengthening the technological and digital competitiveness of companies and national research centers by facilitating and enhancing the knowledge, use and dissemination of the patent protection system in order to encourage the investments and the technological transfer of inventions from the world of research to the world of production.
2. The Amendments
Even taking into account that the draft law has yet to be submitted to Parliament for examination, a preliminary analysis of the legislative text can still be made. In this sense, the reform is based on three different guidelines that converge in the same intention of pursuing the goals described above. Specifically, some of the amendments to the Italian Industrial Property Code aimed at strengthening the competitiveness of the Country System and protecting industrial property (Chapter I), others aimed at administrative simplification and the digitalization of procedures (Chapter II) and, lastly, there is a group of coordination and adjustment rules (Chapter III).
In this context, the provisions of Chapter I are particularly important. The Article 1, which amends Article 14, paragraph 1, letter b) I.I.P.C., explicitly introduced the exclusion of registration of trademarks which may be evocative, pirated or imitative of geographical indications and protected designations of origin, thus giving them the same protection as other types of trademarks. In this way, not only a harmonization of protection has been implemented, in order to avoid the repetition of cases such as that relating to the ‘Parmesan’ trademark, but the importance of trademarks aimed at enhancing the value of local products and representative of Made in Italy has also been recognized.
Also significant is the introduction, pursuant to Article 2 of the draft law, of Article 34-bis I.I.P.C., which establishes the possibility for those who have an interest to apply for temporary protection of designs presented at trade fairs and exhibitions. This provision, which implements Article 11 of the Paris Convention for the Protection of Industrial Property of 1883, allows the legal protection of designs and models to start from the date of the exhibition (if the application for registration is filed within six months). The rationale of the provision would seem to lie in the intention to encourage correct professional practices on the market in order to avoid that, in the period between the presentation to the public and the future registration of the design, the bad faith action of third parties may intervene.
One of the most enthusiastically welcomed provisions is Article 3, which, by rewriting Article 65 I.I.P.C., provides the elimination of the so-called “Professor’s Privilege”, a mechanism introduced into the Italian university system by Law No. 383 of 18 October 2001 “Initial measures to relaunch the economy”, whereby inventions developed in the academic environment are owned by the professors or researchers who conceived them and not by the research structures that financed their development costs. With the reform, however, it would seem that the methods identified to boost the economy have undergone a sharp reversal: the new Article 65 I.I.P.C., in fact, no longer assigns ownership of inventions developed in public research to the single professor or researcher, but to the university or research organization. This is therefore another tool introduced in Italy, aligning its legislation with that of other European countries, in order to promote innovation and research.
The same need is also met by the inclusion of Article 65-bis I.I.P.C., which formally recognizes the possibility for universities, public research bodies and institutes for hospitalization and care of a scientific nature to set up a technology transfer office (so-called UTT) for the promotion and exploitation of industrial property rights, also by means of collaboration with companies.
Finally, we cannot overlook the administrative simplification and digitalization of procedures carried out by the draft law, which is implemented, for example, through the reduction from forty to thirty days of the time limits for the convocation of the parties to the hearing before the Board of Appeals (Article 139 I.I.P.C. as amended by Article 9 draft law) and through the simplification of the procedure for granting new plant varieties (Article 170 I.I.P.C. as amended by Article 12 draft law). These initiatives are aimed, on the one hand, at reacting promptly to the speed of the digital revolution to which our society is subject and, on the other, at encouraging economic operators to participate actively in the industrial growth of the country.
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