Italy IP Law Revision Allows New Coexistence of National and Unitary Patents

Following several months of deliberation, the Italian goverment has made several revisions to its Industrial Property Code (IIPC) with the support of the Italian Trademark and Patent Office (UIBM). The Italian parliament’s House of Representatives (Camera dei Deputati) officially approved the revisions on 18 July 2023, which came into force on 23 August.

A press release issued by the UIBM states there are two primary objectives to the reform: to boost the competitiveness of Italy’s courts and IP protection system, and to simplify and digitalise procedures.

Implications for patent

Among a general reworking of the country’s IP code, the most significant revision pertains to the co-existence of national and European or unitary patents. Prior to the changes, Article 59 of the IIPC stipulated that an Italian national patent would be void in the event that a party files a European patent designating Italy or a unitary patent for the same invention, on the same date with the same priority date.

Now, however, patent owners may protect their inventions with both a national patent, and a European or unitary patent. This will enable patent owners to choose whether to enforce their IP rights before a national court based on the national patent, or before the Unified Patent Court based on the European or unitary patent. According to some Italian patent lawyers, allowing both patents to co-exist means greater flexibility for patent owners.

However, Laura Orlando, managing partner for Italy and global IP head at Herbert Smith Freehills, told JUVE Patent, “The issue I see in practice, from a litigation perspective, is that the new law does not set out a safeguard mechanism to restrict the enforcement of the Italian ‘double’ patent in case of parallel UPC proceedings. It remains to be seen how often a scenario like this is going to happen, however it may leave room for possible procedural tactics.”

End of professor privilege

Furthermore, amid the wider implications for patent owners, the government made a significant change to Article 65. Previously, this had stipulated that an inventor employed by a public university or research institution retained all rights to an invention – the so-called ‘professor privilege.’

The government’s amendements have essentially reversed this rule. This means that the private or public university or research institution owns all rights over the patentable invention, with the inventor employed by the body designated as author. The employer must file a patent for the invention within six months. However, if the employer fails to do so, the inventor may file a patent application under their own name.

According to sources, academics have often criticised the professor privilege. The latter now hope the reform will facilitate transfers of technology from research institutions to businesses and thus encourage the exploitation of IP rights.

Product seizures now permitted

In addition, officials revoked paragraph three of Article 129, concerning the seizure of potentially infringing products at official trade fairs. Previously, the rule prohibited such seizures and only allowed the removal of a description (descrizione), a measure similar to the French procedural tool saisie-contrefaçon. Market participants have praised this as a positive step in fighting infringement.

Meanwhile, the government also amended Article 60, which concerns patent expiration. Following the revision, patents are valid for 20 years, “with the expiration of the last instant on the day corresponding to the day of filing of the application.”

According to experts, litigants have exploited Article 60 in the past by questioning the official date of expiration. The amendment should thus bring the article more in line with Regulation 131 of the European Patent Convention, which lays out a definitive approach to the calculation of time periods.

Boost to the Italian market

Overall, the changes should streamline procedures to make the system more efficient. This is especially relevant in the introduction of, for example, measures to abolish an obligation to file hard copies of documents (Article 147). The reform also creates shorter terms for appeal decisions and allows parties one month extra to pay patent fees.

Moreover, the IIPC reform aims to improve the overall competitiveness among Italian businesses, while encouraging the use and enforcement of IP rights. Market participants told JUVE Patent they expect the amendments to lead to a rise in patent cases, not only before national courts, but also at the UPC divisions in Milan. The capital of Italy’s Lombardy region was confirmed as the third and final seat for the UPC central division in May.