Italy: Introduction To Intellectual Property Law In Italy

1. PATENTS

The regulation of patents in Italy is governed by the provisions of the Civil Code (Arts. 2584-2591) and the Patent Act No. 1127 of 1939 as revised by Law No. 338 of 1979 (‘PA’). Italian patent law has also been amended to comply with the patent provisions of the TRIPS Agreement 1995.

Patents protect ‘inventions’ – a term covering both new products and processes.

Discoveries, scientific theories, mathematical methods, schemes, rules and methods for performing mental acts, playing games or doing business, computer programs, and the presentation of information are excluded from patentability. Methods of treatment of the human or animal body are also specifically excluded. Following the TRIPS Agreement this does not exclude micro-organisms and essentially biological processes for the production of plants or animals other than non-biological and micro-biological processes.

Under Italian patent law an invention or process must satisfy three criteria in order to be patentable, namely novelty, inventive step and industrial application:

• novelty – the invention must not form part of the state of art;
• inventive step – the invention must not be an obvious development of the state of art to an expert in that field;
• industrial application – the invention must be capable of industrial application (for these purposes industry includes agriculture).

Generally speaking, disclosure of an invention prior to the filing of a patent application will destroy the invention’s ‘novelty’, thereby preventing it from being patentable. However, prior disclosure will not prejudice a patent application where it takes place within six months prior to the filing date and results directly or indirectly from an evident abuse (such as breach of confidence) affecting the applicant.

Since Italy is a member of the Patents Co-operation Treaty (PCT) a patentee may seek protection simultaneously in a number of countries by filing an 'international' patent application. Priority may be claimed within the meaning of the international convention from an earlier patent application for up to 12 months after the filing of the earlier application.

To obtain a patent an application must be made to the Patent and Trade Mark Office (‘PTMO’). Where the application is made on the basis of priority claims under a European or international patent application evidence of this must be provided.

The Italian Patent Office only examines patent applications to ensure that all formal requirements have been satisfied. There is no substantive examination into "prior art" or into whether the invention is in fact ‘novel’.

Patent applications, whether accepted or rejected, are available to the public 18 months after filing or 90 days after filing if the application so requests in his application.

There is no opposition procedure within the Italian registration procedure. The only way to obtain a revocation or cancellation of a patent is by initiating litigation claiming invalidity of the patent.

Once the patent is granted, the PTMO must publish the notice of the grant in its bulletin Journal of Patents. Thereafter, the specification and drawings are printed. The inventor’s name must appear on both the publication and the printed specification. These documents are available to the public.

The patent belongs to the inventor or his successors in title. In the case of inventions by employees working under an employment contract or in an employment relationship, where the invention is contemplated as the subject-matter of the contract or the employment relationship and the employee is paid for that purpose, the rights of the invention belong to the employer. If the invention is not contemplated as the subject-matter of the contract, but is still made in the execution of this contract, the rights of the invention will still belong to the employer, but the employee is entitled to equitable remuneration, to be defined depending on the importance of the invention. In both the above cases, the inventor retains his right to be recognised as the inventor.

It should be noted that an invention is considered to have been made during the execution of the employment contract or relationship, if the inventor files an application less than one year after having left a private company or public administration with activity in an area related to the invention.

The patent owner has the exclusive right to manufacture and sell the patented product and/or the product resulting directly from the patented process. In more general terms, he also has the exclusive right over any form of commercial activity with regard to that product. The monopoly right to trade the product is, however, exhausted once the product is first put on the market.

If use is made of an invention in the inventor’s own business during the 12 months prior to the date of filing or to the priority date, the inventor may continue to use the invention within the limits of this prior use. The prior use right is only transferable together with the business in which the invention is used and the burden or proving prior use and its extent rest with the prior user (Art 6 PA 1979).

The patent is protected for 20 years commencing from the date of the filing. It may not be renewed or extended thereafter.

Patents can be assigned or licensed without any restriction (other than those relating to competition rules). A written form is not mandatory. A contract for the transfer of the patent is subject to the general rules of the Italian Civil Code. In practice, most parties prefer to agree in writing and record the transfer by the PTMO, this record being a public document.

There are no specialist patent courts in Italy and patent matters are usually dealt with by the District Court (Tribunale). Since Milan and Turin are the most important industrial centres in Italy this has inevitably led to a higher concentration of experienced judges in these areas.

Civil actions are usually either actions for infringement or actions against patent owners for declarations of invalidity or declarations of invalidity (declaratory judgement actions). Actions for infringement may be brought by the patent owner, and his exclusive licensee. Infringers may be manufacturers, retailers and ‘users’ in the case of a process or method.

The civil remedies available include:

• a search (description) order and seizure order;
• an injunction to prevent the continuation of the infringing activity;
• assignment of ownership of the goods seized;
• destruction of the infringing articles;
• damages; and
• publication of the decision.

Since interlocutory proceeding are very effective in Italy, where possible it is advisable to begin patent litigation with an ex parte petition requesting a seizure of the infringing goods and/or the means of production on the grounds of the manufacture or sale of infringing products. The ex parte nature of the order ensures that the defendant does not conceal the products preventing the effectiveness of the measure. Interlocutory injunctions are rarely granted ex parte but are usually requested in the same petition containing the request for the seizure order. Proceedings can be brought not only against the producer but also against the retailers. The petition to the court must demonstrate that (i) the patent is valid and (ii) that it has been infringed.

Defendants have a right to lodge an immediate appeal against the seizure and injunction within the framework of the interlocutory proceedings. The appeal is heard by a panel of judges of the same district court but does not include the judge who originally granted the interlocutory provision. Immediate remedies in the form of urgent and injunctive measures are available and widely used in patent proceedings. Ordinary proceedings must be commenced within 30 days.

The Custom Authorities may provide assistance in preventing the circulation of infringing goods in accordance with their obligations under EC Regulations.

2 . TRADE MARKS

A trade mark is any sign capable of being represented graphically and which distinguishes the products or services of one undertaking from those of another undertaking. Following the implementation of the EC Directive on the Harmonisation of Trade Marks in Italy trade mark protection has been extended to included names of persons, drawings, letters, figures, sounds, the shape of the product or its packaging, colour shades or combinations.

An application for registration must be made by the person entitled to obtain such registration or by his assignee. The applicant must be using or intending to use the trade mark in manufacture of or the trade in products, or in the provision of services of his own business.

The registration must be accompanied by a specimen of the mark and must include a statement of the class of products or services which the mark serves to distinguish. An separate application is necessary for each mark filed. An application fee is payable as well as a further fee on registration, which will depend on the number of classes in which the product or service is to be registered.

There is no substantive examination of a trade mark prior to registration, but the PTMO will ensure that the trade mark application complies with the formal requirements as set out in Article 29 of the Italian Trade Mark Law ensuring that is not contrary to law, public order or public morality. Searches of the trade mark registry are optional however, it is advisable to search the register before applying to register a trade mark.

An appeal can be made to the PTMO Appeal Board against a decision to reject a trade mark. A further appeal is also available, on points of law only, to the Italian Supreme Court (Cassazione). There is no opposition procedure for third parties. The only avenue available in the event of violation of third party earlier rights is to start ordinary proceedings before the competent District Court to obtain a declaration of nullity.

Once a trade mark is registered, the PTMO publishes a notice of the application and the registration together with a specimen of the trade mark in its Bulletin.

Trade mark protection last for 10 years from the date of filing of the application and is renewable.

Italy does not have any specialised trade mark courts so that all Italian District Courts (Tribunale) are competent to rule on trade mark matters.

Substantially the same interlocutory remedies are available in trade mark infringement cases as in patent infringement cases.

If the case does not settle following the preliminary proceedings, ordinary proceedings must be commenced within 30 days of confirmation of the seizure. Remedies available to the plaintiff include an injunction, assignment of ownership, destruction of the products seized, compensation of damages and publication of the decision.

3. COPYRIGHT

In Italy, copyright and neighbouring rights are regulated by articles 2575-2583 of the Italian Civil Code of 1942 and by the Copyright Law No. 633 of 22 April 1941, as amended.

Copyright subsists in all works of art, original or derivative, which belong to the categories of literary, musical, choreographic, artistic, architectural, cinematographic and photographic works. In general copyright expires 70 years after the death of the author. More recently computer software and databases have been included in the list of works of art protected by copyright.

The work must be "creative" in order to be protected by copyright. In practice, however, the degree of creativity required by law is minimal. Copyright protection has been granted for maps, legal maxims and accounting tables.

Neighbouring rights protect certain subject matter which does not qualify for copyright protection such as:

• sound recordings and similar analogous material;
• radio and television broadcasts;
• interpreters’ or performers’ rights;
• theatrical scenes or sketches;
• photographs which do not qualify for full copyright protection;
• letters and portraits;
• engineering projects; and
• titles, headings, external appearance of works, articles and news items.

Following the implementation of the EC Directive on Database protection, a sui generis right has been granted to databases which do not qualify for full copyright protection.

Copyright arises automatically on creation of the work and is not conditional upon any formal requirement such as registration.

However copyright works can be registered through optional registration process which is managed by the Office of Literary, Artistic and Scientific Property. SIAE (the Italian Collecting Society) manage the registration of cinematographic works and software. Such registration records the existence of the work, its publication and the fact that it was created by the author, editor or producer on a stated date. While registration can provide useful evidence in enforcing copyright, failure to register does not prejudice the acquisition and exercise of copyrights relating to protected works in any way.

Italian Copyright Law states that ‘copyright shall be acquired by creation of a work from an intellectual effort’. This effectively means that only individuals may originally qualify as author of a work although the economic rights may be immediately transferred to a company as a result of the terms of say, an employment contract.

However, for software and databases in the absence of contrary agreement, if the author is an employee and the work is created in the course of his employment, the economic rights in the work belong to the employer.

Where a copyright work has been created by a number of individuals so as to form a "communal work" (in which individual contributions are indistinguishable) copyright in the work belongs to the person in charge of co-ordination. Other contributors may have copyright in individual component parts of the final work.

Where the individual contributors remain identifiable in the finished work the work is defined as a "combined work". A combined work may have any number of authors. For example in the case of a cinematographic work, the screenplay writer, scriptwriter, music composer and main artistic director are all co-authors. The producer has economic rights but no moral rights.

Generally speaking the author of a creative work becomes the owner of both economic and moral rights.

The most important economic rights are:

• the right to publish the work;
• the right to reproduce it, in any form (printing, photocopying, photographing, cinematography);
• the right to distribute lend and rent it;
• the right to transcribe the work, for example, to transform an oral work into a written work or any other type of ‘fixed’ format;
• the right to perform the work in public (this does not include a performance within the normal family circle, school or college);
• the right to transmit the work by radio, television, telephony, broadcasting and other analogous means (including the right to cable and satellite transmission);
• the right to translate the work into another language or dialect, and to modify or transform it in any other way.

Moral rights in copyright works are as follows:

• the "paternity" right i.e. the right to be identified as author;
• the "integrity" right i.e. the right to object to any distortion, mutilation or any other modification of, and any other derogatory action in relation to the work, which would be prejudicial to the honour or reputation of the author;
• the right to prevent the work from being published; and
• the right to withdraw the work from commerce for serious moral reasons, subject to an obligation to indemnify anyone who has purchased the economic rights to the work which is withdrawn.

Moral rights are inalienable, non-transferable and independent from economic rights.

The economic rights are freely transferable through assignment or licence subject to the following rules:-

(i) the transfer of rights must be evidenced in writing;

(ii) the transfer of one exclusive right does not imply the transfer of any other exclusive right.

Italian law does not provide for compulsory licences. There are only a few 'fair-use' exceptions under the Italian Copyright Law which include in particular reproduction, loan or photocopying of works in libraries, the abridgement, quotation or reproduction of parts of works for the purpose of criticism or discussion.

SIAE, the Italian Collecting Society has been in existence since 1882 and administers the exclusive rights for royalty collection purposes for public performances, broadcasts of any copyrighted worked which has been assigned to it.

Civil remedies available for copyright infringement include search (description order) and/or seizure orders depending on the most appropriate measures in the circumstances. In the case of a search order, an officer of the court together with an expert inspect the defendant's premises and take a written description of the results of the search (the description order). Photographs are permitted. The plaintiff may also attend the execution of the search and/or seizure order together with his lawyer. A seizure order results in any infringing goods being placed under seal by the Court Bailiff. These may be later removed and destroyed. The above measures may be granted ex-parte (i.e. without the prior notification to the infringer). A security payment into court will often be required. An injunction against further copyright infringement may also be requested in the interlocutory stage.

In the main proceedings is possible to request the Court to order a declaration as to ownership of the rights, a permanent injunction against further copyright infringement, the removal and destruction of any copies which has been unlawfully reproduced and distributed as well as the removal and destruction of any apparatus used in the manufacture of unlawful copies. Furthermore damages may be requested as well as publication of the decision in a number of national newspapers.

4. DESIGNS

Designs in Italy are protected by registered design law as amended to implement EU Directive 98/71/CE. A design may be registered if it is new and has an individual character. Designs may be two or three-dimensional. A design is considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority.

Designs shall be deemed to be identical if their features differ only in immaterial details.
A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Newly registered designs can be protected in up to a maximum of 25 years

The creator or his assignees own the rights in a new design, granting the owner the exclusive right to exploit the design and to market products in which the designs are incorporated, as well as to transfer the design rights. In the case of a design created by employees, during the course of the employment, the design belongs to the employer, subject to the right of the employee to be acknowledged as the author of the design and to have his name included on the design register.

The adoption of EU Regulation 6/2002/CE on Community designs, introduced unregistered design protection, which was formerly not provided for by Italian law. Under Art.19 of the regulation unregistered Community design confers on its holder the exclusive right to use it and to prevent any third party not having his consent from using it, unless the contested use results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder. Unregistered design protection lasts 3 years as from the date on which the design was first made available to the public within the Community.

The implementation of EU’ Directive n. 98/71/CE substantially changed Italian copyright law regarding the copyright protection of designs. Formerly, the law provided that designs could amount to copyright protection only if their artistic value could be "severed" from their industrial application. This provision was very strict interpreted by Italian Courts which, in practice, denied copyright protection for any three-dimensional design. The implementation of the directive removed the principle of "severability" and Italian copyright law now provides that industrial designs can be protected under copyright law (and thus for the life of the author plus 25 years) if they have creative character and artistic value. Under the previous rule registered design protection lasted for 15 years but with the implementation of the Directive newly registered designs. Copyright protection of designs lasts 25 years after the death of the author.

5. UTILITY MODELS

Utility models are often regarded as ‘mini inventions’ with lesser creative effectiveness and less importance for the improvement of a product than a patent.

Under the definition provided by the law, the subject matter of a utility model can be a model apt to confer a particular effectiveness or convenience of application or use to machines or parts thereof, instruments, tools and articles of use in general, such as new models consisting of particular constructions, arrangements, configurations or combinations of parts. Utility models may be protected for a maximum of 10 years.

An inventor might have to decide in borderline cases whether to protect his invention by a patent or a utility model. Simultaneous protection is inadmissible, but simultaneous filing is possible, the utility model being effective if the patent is rejected or rejected in part.

In Italy the Law on Industrial Models regulates, on the one hand, utility models and, on the other hand, ornamental models and designs (modelli ornamentali e disegni). The courts have held that, while both require a creative contribution, a utility model renders an existing article more convenient with an innovative idea translated into a particular conformation, arrangement, configuration or combination of parts, while an ornamental model is translated in a particular combination of lines, colours or other features.