IPSER

Intellectual Property Services – Milano

Founded in 1967

OTHER IP LAWS

Computer programs, chips and plant varieties can also be protected

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.

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.

PATENT SEARCHES

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.

Computer Software and Copyright Protection, Semiconductor Chip Protection, Plant Breeder’s Rights

Computer Software Protection

The protection of computer software was recently regulated after many years of discussions and an entire new section of the Copyright Law was enacted.
A special registration procedure for computer programs is now possible, but is open only to residents of Italy, both nationals and foreigners. However they can be also distributors in Italy of programs generated abroad, so that every program can be registered, once it is circulated in Italy. However the registration is not compulsory as for all other literary and artistic works according to the Berne Convention.
We have to point out that software designed to control machines or processes is patentable.
Finally, Italy recently enacted a comprehensive law on computer related crimes providing for penal remedies in a wide range of computer piracy acts.

Semiconductor Chip Protection

The provisions are those indicated in the EEC Directive. It is only to be pointed out that registration can be requested only by persons being nationals of an EU Member State or having domicile or permanent establishment in the EU or of a country granting a reciprocity treatment to EU nationals.

Plant Breeder’s Rights

This is a peculiar kind of protection, because the granting procedure comprises two phases, namely a first phase carried out at the Patent Office, where the compliance with the required formalities is checked, and then a second phase where the technical aspects of the new plant variety are examined at the Ministry of Agriculture, unless the same variety had already been subjected to examination in other countries.
Another important feature is the duration of the plant patent, which is 20 years for most plants but 30 years for wood stem plants, like:

  • vines
  • fruit trees
  • forestal essences
  • ornamental trees