- The Italian Intellectual property laws
- Design and Models
- Community Design
- Intellectual Property Litigation
- Custom action against counterfeits
- Licensing and transferring IP rights
A diversified range of provisions and regulations
The Italian laws governing the various aspects of intellectual property underwent a radical modernization in the recent years and this process is still going on. Italy is a member of practically all existing International Conventions in the field of Intellectual Property such as:
- Paris Union Convention
- Strasbourg Agreement concerning the International Patent Classification
- Budapest Micro Organisms Treaty
- European Patent Convention (EPC)
- Patent Cooperation Treaty (PCT)
- Madrid Agreement and Madrid Protocol for the International Registration of Trade Marks
- Nice Agreement for the International Classification of Goods and Services
- European Community Trade Mark Convention
- Locarno Agreement for the International Classification of Industrial Designs
- Hague Agreement for the International Registration of Designs
- International Union for the Protection of New Varieties of Plants (UPOV)
- Berne Convention for the Protection of Literary and Artistic Works
- Universal Convention for the Protection of Literary and Artistic Works
- Hague Convention abolishing Consular Legalizations
Italy has implemented the various EEC Directives and Regulations in this field, such as the Regulations concerning the Supplementary Protection Certificates for Pharmaceutical and Plant Protection Patents, the Software Protection, the Protection of Semiconductor Chip Design, the Protection of Appellations of Origin. Italy is also a member of the World Trade Organization (WTO) and has amended the I.P. laws to harmonize them with the compulsory provisions of the Agreement on Trade Related Aspects of Intellectual Property (TRIPs).
From 2005 the Industrial Property in Italy is regulated by the Italian Code of Industrial Property. This code unified into a single law all the provisions concerning patents, models and designs, trademarks, and related special technical fields while copyright and unfair competition remain covered by specific laws.
When in the following pages there is reference to Legislative Decree No. 30, this is the official name of the Italian Industrial Property Code, that was recently amended together with the corresponding Implementing Regulations
An English translation of the various laws was effected by our office and an updated version of each law is available upon request.
Legislative Decree No. 30 of February 10, 2005
The Italian law on Industrial Property Code has a section dedicated to these models covers two different kinds of rights, that in most countries are regulated by two separate laws as there is very little in common between designs that protect ornamental or shape features and utility models that cover innovations which do not reach the inventive level required for an invention patent. Indeed an article having both decorative and utilitarian characteristics may be protected at the same time with a utility model patent and a design patent.
As far as the designs are concerned, it is possible to effect the so-called multiple deposit, by which several designs may be combined in one multiple application, if they fall in the same class of the Locarno Agreement for the International Classification of Industrial Designs.
Generally speaking, utility models follow the rules of the invention patents. Thus for instance they are laid open to public inspection 18 months after the filing or priority date, while ornamental designs are immediately available for inspection, as soon as the files reach the Italian Patent Office from the various provincial deposit offices, but applicants can request to postpone the availability to the public up to a maximum of 12 months from filing or priority date.
Since April 2003 the Community Design has been entered into force .This title, as for the Regulation of the European Union Trademark, is a unitary right protecting the aspect of your goods in all the 27 European Community member countries.
There are two different types of protection
Unregistered Community Design
This kind of protection do not need any filing but, as for the Copyright, born automatically in the moment of the creation. This right can be enforced only for three years.
Registered Community Design
A Community Design application has a duration of 25 years from its filing date against the payment of a maintenance tax every 5 years . You can also file a multiple filing according to the number of items belonging to the same class of the International classification of Designs (from 2 up to 99 models designs of the same class if filing electronically otherwise there is no limit).
In a world where often the value of your good is determined almost for the totality by its aspect ,with a single filing you have the right to prevent the production, sale or advertisement of unauthorized designs in the European Union, and to request to stop the importations in the territory.
It is possible to request the filing of your Designs within one year from the first putting in commerce, giving to the owner the opportunity to evaluate the convenience of the filing.
However if you also seek protection outside European Union, it is warmly suggested not to disclose your design before filing
Moreover it is possible to request the late publication of the filing until 30 Months,in order to keep your creations secret, but always protected, until the right timing for their commercialization.
Here skilled strategy is a must
In absence of opposition or invalidation proceedings to be held before the Patent Office, all disputes in Italy for intellectual property matters must be brought before the courts.
A restricted number of specialized courts handle the lawsuits related to the intellectual property laws, being entitled to issue decisions in these matters. These decisions can however be revised by a little number of Courts of Appeal.
A useful provision of the Italian I.P. laws is the rather quick and easy way to obtain a court order allowing the plaintiff to inspect and describe the products or processes of the alleged infringer so as to obtain the proof of the infringement. The plantiff can obtain an interlocutory injunction stopping the production and sale of the infringing goods but he must then start a regular lawsuit to validate the injunction.
The judges are assisted by neutral experts that will give them technical assistance during an expertise in which the parties have the right to attend with ex-parte experts who are submitting arguments in support of their own party.
Our firm has a wide reputation in assisting the trial lawyers in the course of a litigation. Our members are frequently involved in technical expertises before the courts and inspections of infringing enterprises ordered by judges, seizure of counterfeited goods and all kinds of interlocutory measures ordered by the courts.
Unfortunately there is a huge backlog of lawsuits in the Italian courts so that a decision in the first instance can be expected only 3-4 years from the date of serving the summons writ, and approximately the same time can be estimated for the appeal stage.
Our firm is an active member, since its foundation, of INDICAM, the Italian Anti-Counterfeit Committee of the Brand Names, and assists the Clients in the civil and criminal actions against counterfeiters of their goods and/or services and infringers of their rights.
Quite often a patent dispute or litigation requires name index and/or subject matter searches at various levels and a corresponding examination of the results and related opinion. Our firm is well known for a quick and reliable service for any kind of search for all categories of IP rights
Holders of Intellectual Property rights may request customs authorities to prevent the entry into member states of the European Union of goods infringing his rights. The applications for customs action may be based on any kind of IP right covered by the relevant laws of the country involved.
The application for customs action must be accompanied by proper documentation describing his goods suspected to be infringed and any pertinent information about the provenance of the infringing goods and their recipients.
If such goods are found, the customs office suspends the release of the goods and invites the holder to inspect the goods within 10 days. If the holder recognizes the goods as counterfeited, criminal proceedings are started automatically, otherwise the goods are released.
The application for customs action has a one year duration and its renewal is possible. Our office is ready to assist the holder in these proceedings.
Once an IP right is obtained, often such a right is involved in a commercial transaction. One possibility is that the owner grants to another party an exclusive or non-exclusive license to make, use and/or sell the relevant products. Another possibility is the assignment of his rights to another party.
Our firm is frequently involved in this kind of transactions, which are very often complex and required deep knowledge of IP, commercial, corporate and fiscal laws and regulations.
Our firm can assist the clients in the negotiations, drafting the contracts, registering and recording the contracts at the corresponding governmental offices in Italy and abroad.
In case of disputes arosen during the file of the contract, our office can assist clients in extrajudicial proceedings(mediation and arbitration) and lawsuits.