Patents

According to the Italian IP code, an invention in any technology field, be it a new product or a new method, may be patented.

Discoveries, scientific theories, mathematical methods, plans, principles and methods for intellectual activities, games and business activities, computer programs and presentations of information as such are not considered inventions and are thus not patentable.

Methods of surgical and therapeutical treatment of the human or animal body, diagnostic methods applied to the human or animal body as well as essentially biological methods for plant breeding or animal varieties are not patentable.

Inventions must meet the following patentability requirements: 1. Novelty: an invention is considered new if it has not been publicly disclosed prior to the filing or priority date by any person (including the applicant); 2. Inventive step: the invention involves an inventive step if it cannot be derived from the prior art by a person skilled in the art in an obvious manner; 3. Industrial applicability: an invention is considered to have industrial applicability if its object can be manufactured or used in any type of industry, including agriculture.

Patent applications are subject to substantive examination only if no priority is claimed (i.e., only Italian first filings are examined).

The duration of a patent is 20 years as of the filing date.

An infringement action can be started even while a patent application is pending, provided that the patent is granted before the court decision.

Trademarks

As provided by the Italian IP Code, a trademark may consist of words, including personal names, designs, letters, numerals, sounds, shapes of goods or of packaging, combinations or shades of color, provided that it is new, distinctive, lawful and not contrary to the morality. This broad definition includes also the so called non-traditional trademarks such as, e.g., color trademarks, sound trademarks, motion trademarks, three-dimensional trademarks etc.

As a general principle, the Italian IP Code grants to the owner of a trademark the exclusive right to use the trademark and to prevent third parties from using trademarks or other distinctive signs identical or similar to the earlier trademark for identical or similar goods or services, if this creates a likelihood of confusion on the commercial origin of the product or an association between different companies. The trademark is in force for ten years and may be renewed every 10 years for an unlimited period of time.

In order to enforce trademark rights, the owner may:

—file oppositions against new conflicting applications–both national applications and international designations. This administrative procedure is particularly cost-effective;

—apply for a surveillance of the trademark before the Customs by asking the authorities to seize counterfeiting goods according to the European Union Regulation entirely implemented by the Italian law;

—start legal actions before the Italian IP Specialized Court in order to stop any counterfeiting behavior by third parties. The unfair competition law may be used, too, as a basis for court actions.

In the light of the above, in order to better exploit the tools provided by the law to protect the trademarks, it is recommended to monitor the real and virtual market as well as the trademark databases by activating surveillance services.

Designs

To enjoy protection, a design shall meet the following requirements: 1. Novelty: the design is new if no identical design has been publicly disclosed before the filing or priority date; 2. Individual character: the design has an individual character if it gives to an informed user an overall impression which is different from any other design that has been publicly disclosed before the filing or priority date.

The protection period is five years from the filing date and can be renewed for further five years up to four times. The total duration cannot exceed 25 years.

The owner of the design enjoys the exclusive right to use it (including manufacturing, supplying, putting on the market, importing, exporting and storing for those purposes products to which the design is incorporated or applied), and has the right to prevent third parties from using the design without the owner’s consent.

Copyright

Copyright protection in Italy is based on the “Berne Convention for the Protection of Literary and Artistic Works” and on the Italian Copyright Law. Author’s original works are protected from the date of creation. Copyright protection is not subject to any registration, but requires evidence of the date of creation. Copyright protected works include literary works, animation, musical works, sound recording, software, databases, architecture works and graphic arts. Depending on the kind of work, the duration of protection may vary from 70 years after the death of the author to 20 years from the creation-such as photos.

Designs, when provided with artistic value, can be protected by copyright in addition to the protection conferred by design registration.