Clifford Chance

The Italian Council of Ministers has approved the draft law to reform the Italian IP system and strengthen its competitiveness.

On 1st December 2022, the Italian Government approved the draft law (Disegno Di Legge) providing for the reform of the Italian Code of Industrial Property (i.e. Legislative Decree No. 30 of 10 February 2005).

The proposed reform falls within the scope of the National Recovery and Resilience Plan (PNRR) and is highly consistent with the "Intellectual Property Action Plan to Support the EU’s Recovery and Resilience" adopted by the European Commission back on 25 November 2020.

The main objectives foreseen in the proposed reform's provisions are (i) to strengthen both the competitiveness of the country and the protection of industrial property, (ii) administrative simplification, and (iii) digitisation of industrial property rights procedures.

In harmony with the approach adopted by the majority of the European Union member states, the proposed reform overturns the so-called "Professor Privilege", attributing the ownership of inventions of employees and researchers at universities and public research bodies in the first instance to the entity to which they belong, and, only in case of inaction of the latter and on a secondary basis, to the researchers themselves. This mechanism is without prejudice to the inventors' right to be recognised as the author of the invention.

Further aspects worth mentioning include the introduction of the prohibition to register trademarks that are evocative, usurpative or imitative of protected geographical indications and designations of origin, and the recognition of temporary protection to designs exhibited at national or international trade fairs.

In addition, the proposed reform enhances preliminary control over the filing of patent applications which are potentially useful for the defence of the country and accelerates the related application procedure.

The draft law containing the proposed reform should now be discussed between the two chambers of the Italian Parliament (Senate and Chamber of Deputies); it is currently under the scrutiny of the Senate and, if approved in agreement with the Chamber of Deputies, it will finally be enacted.