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.

Formal Requirements

The 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 Owner

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.

Content of the Right

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).

Duration of Protection

The patent is protected for 20 years commencing from the date of the filing...