Region: Italy

A recent decision of the Italian Board of Appeal confirmed that it is possible to file the Italian translation of a European patent within two months of expiry of the corresponding term by paying a fee and filing a request under Article 192 of the IP Code. The decision is favourable to patent owners and criticises the strict policy of the Italian Patent and Trademark Office.

06 March 2013

In order to comply with the EU Internal Market Services Directive, the Ministry of Economic Development has created an official database for Italian certification trademarks. Most of the signs included in the database are registered as Italian or Community trademarks, but some, particularly those regarding local ventures, are unregistered marks.

12 December 2012

Article 170<i>bis</i> of the Industrial Property Code introduced procedural requirements on the filing of national patent applications in the biotechnology field. The majority of the biotechnological inventions provisions added to the code in 2010 mirror corresponding provisions of the relevant directive. However, certain provisions introduce new procedural requirements which are peculiar to Italian law.

07 November 2012

Sometimes there is nothing better than an Italian coffee conveniently dispensed from one of those colourful coffee capsules. Recently, the makers of two brands of capsules, Nestlè and Vergnano, brought several IP issues before the Court of Turin. Nestlè sought to prevent Vergnano from using its NESPRESSO trademark when marketing its own coffee capsules.

10 October 2012

A 2011 decision of the Court of Turin addressed the controversial issue of the patentability of so-called "intermediate chemical products", following the Italian courts' general approach to prevent the patentability of such intermediates. It is hoped that the appeals court will reverse the Turin court's decision, thereby aligning Italy with many other jurisdictions throughout the world.

19 September 2012

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.

18 July 2012

In Italy, principles of morality represent absolute grounds for refusal of a trademark registration. Trademarks including terms or devices regarded as being contrary to good morals are deemed to contravene public order, and cannot be registered. Two recent decisions provide examples of the interpretation of "good morals" as applied by the Italian Patent and Trademark Office Board of Appeal.

20 June 2012

Following San Marino's accession to the European Patent Convention in 2009, a key issue is whether, and if so to what extent, there is an interest in validating granted European patents in San Marino. In contrast, San Marino is not a member of the European Union and Community trademark registrations do not cover San Marino.

23 May 2012

The Industrial Property Code now explicitly allows for a declaration of non-infringement in certain circumstances. Such a declaration could previously be issued only during the main judgment. A recent decision of the Court of Venice clarified the appropriate basis for such declaration by finding that a preliminary declaration of non-infringement is inadmissible if it is based only on a challenge to the validity of an IP right.

09 May 2012

The Italian provision granting copyright protection to works of industrial design has been amended five times in the past 11 years. Controversial provisions establishing a long grace period for infringers that commenced their activities before 2001 have been repeatedly amended under pressure from the European Commission. The most recent amendment has now extended the grace period for infringement to 13 years.

11 April 2012