ITALY Law and Practice Contributed by: Monica Riva, Alessandra Ottolini, Francesco Chierichetti and Giulia Ghidini, Legance
1.4 Ownership, Assignment and Licensing Entitlement and Employee Inventions The right to a patent belongs to the inventor or suc- cessor in title. For employee inventions, Italian law distinguishes between: • inventions made within specifically remunerated inventive duties, which belong to the employer; • inventions made within the employee’s duties but not specifically remunerated, which also belong to the employer but may give rise to fair compensa- tion; and • occasional inventions outside assigned duties, which generally belong to the employee, subject to the employer’s statutory option where the invention falls within its business field. University and Research Inventions For university and public research inventions, the inventor must disclose the invention to the institution, which normally decides whether to file and manage the patent. If the institution does not act within the statutory period, the inventor may proceed under the applicable rules. Assignments and Licences Patents may be assigned or licensed in writing. Recordal with UIBM is not required for validity between the parties, but is important for enforceability against third parties and chain-of-title publicity. 1.5 Patent Infringement and Defences Direct and Indirect Infringement Direct infringement includes the unauthorised manu- facture, use, offer for sale, sale or importation of a patented product, as well as the unauthorised use of a patented process and dealing in the product directly obtained by that process. The assessment focuses on whether the defendant commercially exploits the protected technical teaching. Indirect infringement is recognised where a party sup- plies or offers to supply, to an unauthorised person, means relating to an essential element of the invention that are suitable and intended for putting the invention into effect. Liability requires that the supplier knows of the intended infringing use, or should know with ordinary diligence.
Timelines and Costs The search report is usually issued within about nine months. Applications are published after 18 months, unless early publication is requested, and grants often take around 24–30 months if no major objections arise. Costs depend on the invention, claims, translations and professional work, but a standard Italian filing usually involves initial costs of a few thousand euros. Representation Local representation is not always mandatory, but using an Italian or European patent attorney is strongly advisable. 1.3 Scope, Term and Maintenance of Patent Rights Rights Conferred A patent gives its owner the exclusive right to exploit the invention and to prevent third parties from mak- ing, using, offering for sale, selling or importing the patented product, or using the patented process and dealing in the direct product of that process, without consent. The inventor also has the moral right to be named as inventor, which is inalienable and perpetual. Term and Maintenance The standard term is 20 years from the filing date. Annual maintenance fees are due from the fifth year, and increase progressively. If a fee is not paid on time, late payment is possible within a six-month grace period subject to a surcharge. After that, the patent lapses, unless reinstatement is available and the pat- entee proves that the failure occurred despite all due care required by the circumstances being taken. Supplementary Protection Certificates (SPCs) SPCs are available for medicinal products and plant protection products under the EU framework. Their duration is calculated by reference to the period between the patent filing date and the first market- ing authorisation in the EU, minus five years, up to a maximum of five years. A further six-month paediatric extension may be available for medicinal products.
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