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New law helps clarify reductions for pharmaceutical SPCs (International reports)
The Italian Parliament has enacted a new law that, among other things, should help to clear up longstanding confusion over the duration of supplementary protection certificates (SPCs), which apply within the pharmaceutical market when basic patents expire. The new law confirms a provision from 2002 reducing the duration of Italian SPCs.
UIBM’s novel approach to finding sufficient spread between SPREAD and SPREAD (International reports)
The Italian Patent and Trademark Office recently ruled that when two trademarks include the same word element but the graphic context is sufficiently different, a likelihood of confusion may not exist.
Is preliminary technical advice in IP disputes useful? (International reports)
As part of a major amendment of the IP Code, Article 128 was completely redrafted to allow for the use of a procedure that was formerly applied only in civil law matters: the preliminary technical advice. The procedure represents a non-invasive investigative tool to discover another party's position with respect to commercial intentions and competitive fairness, allowing a rights holder to utilise this cost-effective process in cases where infringement is uncertain.
When reverse engineering is difficult, infringement of software trade secrets is confirmed (International reports)
Confirming a judgment by the Court of Turin, a recent Court of Appeal decision provides useful guidance for the application of Articles 98 and 99 of the Industrial Property Code, which governs trade secret misappropriation.
IPTO Board of Appeals rules on validation application submitted by successor to patent owner (International reports)
The Board of Appeals of the Italian Patent and Trademark Office recently reversed two IPTO pronouncements rejecting the validation in Italy of European patents where validation had been applied for in the name of the former patent owner which had ceased to exist due to a merger or assignment of its rights.
Class 35: registering retail and wholesale services at the UIBM (International reports)
Since 2016 the Italian Patent and Trademark Office (UIBM) has taken a harsh stance on registrations for ‘retail and wholesale services’ in Class 35. During this time, the UIBM has consistently refused to register applications directed to these services.
PTO expected to relax its approach to restoration applications (International reports)
The Patent and Trademark Office’s (PTO) practice in relation to restitutio in integrum is expected to relax following a recent decision involving a German holder of a European patent. The PTO Board of Appeals held that the law requires only that evidence be submitted that the degree of diligence demanded by the circumstances has been applied.
An overview of trademark oppositions (International reports)
For many years Italy has lacked a trademark opposition procedure. Although efforts to introduce such a system have been ongoing for more than five years, implementation finally seems to be close. The forthcoming opposition procedure in Italy will be open immediately to all classes.
Board of Appeals rules on the validations of European patents by successors to patent owners (International reports)
The Patent Office Board of Appeals has ruled that the office is not obliged to verify an applicant’s right to patent validation and should simply presume that the applicant owns the patent right and is entitled to enforce it. The decision is good news for owners of transferred rights and should help them cut both costs and paperwork.
Chemical intermediates: patentability and infringement under the doctrine of equivalents (International reports)
The Italian Supreme Court has had the final word on a long-running dispute between Industriale Chimica and Bayer, holding that a chemical intermediate is not necessarily patentable, even if it is novel, inventive and provided in a stable form.
Amended code sets new trend for industrial design case law (International reports)
Following the amendment of the Copyright Act to acknowledge explicitly that design creations are entitled to protection under copyright law, Italian case law in the area of industrial designs is looking far more settled. Earlier this year, a Milan court affirmed this trend by finding that Arco floor lamps qualify for copyright protection.
“Some use” of trademark by bankrupt company does not solve lack of use issue (International reports)
In Jobo Limited v Riccadomus Group SRL the court determined that certain activities by a bankruptcy trustee did not constitute "use" of the bankrupt company’s trademark. Activities which were deemed insufficient included renewing the trademark and sending cease-and-desist letters to purported infringers.
Admissibility of late-submitted invalidity grounds in patent litigation (International reports)
The Court of Milan has held the Italian portion of a European patent invalid because the claims extended beyond the content of the original application as filed. This ground for invalidation was submitted after the deadline set for such submissions; however, the court concluded that new grounds which were not initially presented may be added under certain conditions.
New EPO agreement signals the start of prior art searches (International reports)
A new agreement between the Italian Patent and Trademark Office and the European Patent Office suggests that Italian patent applications could soon be subject to prior art searches. Although some of the details remain unclear, it is hoped that this initiative will make patent protection for new innovations more attractive and give Italian patents a higher presumption of validity than in the past.
Patent opposition procedure in Italy coming soon? (International reports)
In a recent communication the Italian Patent and Trademark Office agreed to accept and consider third-party observations during the pendency of a patent application or during the process for obtaining supplementary protection certificates for medicinal products. The decision may augur the introduction of a true opposition procedure for patents in Italy.
Court of Cassation clarifies management of simultaneous validity and infringement proceedings (International reports)
A recent Court of Cassation decision has affirmed the principle that when separate infringement and invalidity proceedings are pending simultaneously, the court managing the infringement action should stay those proceedings until conclusion of the validity action.
Ω is a valid and distinctive trademark, court finds (International reports)
An Italian court has found that a purse clasp in the form of the Greek letter omega Ω amounted to valid use of a trademark registration. This is a departure from previous case law, which either refused to acknowledge the validity of marks represented by a single letter or restricted protection to identical forms by competitors.
Establishing the Business Courts for intellectual property (International reports)
In 2003 Italy set up specialised IP divisions at 12 Italian courts. Within the framework of a package of measures introduced to tackle the economic crisis, the new Italian government has now introduced the Business Courts, which will replace the specialised divisions and will also handle certain other matters.
Patronymic trademarks in the fashion industry: what’s in a name? (International reports)
In the fashion industry it is common to use and register the name of a designer as a trademark. But what happens when a designer assigns his or her company's IP assets, including trademarks associated with his or her own name, to a third party, and then continues using the name in new trademarks?
Supplementing your understanding of supplementary protection certificates (International reports)
A recent finding of invalidity has raised the question of whether a supplementary protection certificate (SPC) application can refer to a third party’s first market authorisation in the absence of a specific contractual relationship between the SPC applicant and the first market authorisation owner.
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