The reform of the Industrial Property Code: the Law No. 102 of July 24, 2023 has come into force

After more than 10 years of attempts," - reports the current Minister of Enterprises and Made in Italy - on August 23rd, the Law No. 102 of July 24, 2023, came into force, bringing significant changes to the Industrial Property Code referred to in Legislative Decree No. 30 of February 10, 2005 (Codice della Proprietà Industriale. – in Italian-).

The Italian legislator has set several objectives with this reform, including strengthening the competitiveness of companies and national research entities, making the protection of industrial property rights more streamlined, and digitizing administrative procedures to facilitate business development.

Here’s some interesting innovations introduced in the Italian Industrial Property Code by Law No. 102/2023:

Strengthening the protection of geographical indications and protected designations of origin. Article 1 Law No. 102/2023 amended Article 14, paragraph 1, letter b) Italian Industrial Property Code, titled "Prohibition of registration of marks evoking geographical indications and protected designations of origin", establishing a broad prohibition on the registration of signs. Therefore, signs capable of misleading the public, especially regarding geographical origin, nature, or quality of products or services, or the type of trademark, can no longer be registered. What's new is that all signs evoking, imitating, or conflicting with geographical indications and designations of origin are also prohibited.

Introduction of specific protection for designs and models. Article 2 Law No. 102/2023 introduced Article 34 bis Italian Industrial Property Code, titled "Temporary protection of designs and models at fairs". This provision allows, upon request of the interested party and approval by the Ministry of Enterprises and Made in Italy, the temporary protection of designs or models that are displayed at an official or officially recognized exhibition held within the territory of the State or in the territory of a foreign state that grants reciprocal treatment. This will enable obtaining priority for the registration application, provided that the application is filed within six months from the date of exhibition of the designs and models or the products incorporating them or to which they are applied. Furthermore, Article 129, paragraph 3, Italian Industrial Property Code, has been repealed, allowing seizures of counterfeit products exhibited at fairs, official exhibitions, or officially recognized exhibitions in the State.

Reversal of the so-called Professor privilege to facilitate technology transfer to the productive system. Article 3 Law No. 102/2023 completely reformed Article 65 Italian Industrial Property Code, titled "Ownership of inventions made within universities and research institutions". With this amendment, in derogation of Article 64 Italian Industrial Property Code, when the invention is made in the execution or performance of a contract or employment relationship, even if for a fixed term, with a university (including non-state legally recognized universities), a public research institution, or a scientific institute for hospitalization and care (IRCCS), as well as within the framework of an agreement between these entities, the rights arising from the invention will belong to the inventor's affiliated institution, and no longer to the inventor himself. However, the inventor's right to be recognized as the author remains unchanged.

However, the absolute - and much-awaited - novelty is contained in Article 5 Law No. 102/2023. The wording of Article 59 Italian Industrial Property Code - previously titled "Prevalence of the European patent in case of overlapping protections" - now titled "Relationships between the European patent and the Italian patent" has changed. Therefore, from now on, it will be possible for the same invention to have both an Italian national patent granted by the Italian Patent and Trademark Office (UIBM) and a European patent with effect in Italy granted by the European Patent Office (EPO). The national legislator has thus made it possible for the phenomenon of "double patenting" to exist, i.e., the existence of two distinct patent titles - one national and one European - concerning the same invention. This legislative reform is particularly relevant in the context of proceedings before the Unified Patent Court (UPC), operating since June 1, 2023. In fact, the UPC has exclusive jurisdiction in the contracting states for all disputes concerning European patents, and thanks to the reform of Article 59 Italian Industrial Property Code, inventors can choose, in relation to the same invention, whether to assert the European patent before the UPC or the Italian patent before national judges.

author: Dott.ssa Marta Minnici