ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
1. Intellectual Property Rights and Granting Procedure 1.1 Types of Intellectual Property Rights The types of intellectual property rights for the protection of inventions, granted under the legal framework established by the Italian Code of Industrial Property ( Codice della Proprietà Indus - triale ) (the “Italian IP Code” or CPI), include the following. • Patents: since Italy is a member of the European Patent Office (EPO), the corre- lated rules comply with the standards of the European Patent Convention. Furthermore, with Italy’s participation in the Unified Patent Court (UPC) and the opening of local division in Milan in June 2023 and central division in June 2024, patent holders now have access in Italy to the transnational system for assert- ing and enforcing their rights across multiple EU jurisdictions. • Utility models: Italy, like some other jurisdic- tions, provides protection for utility models but, differently from other juridical systems (like Germany), this is a way to protect techni- cal solutions that do not properly fall within the definition of “invention” under the applica- ble patent law. • Supplementary protection certificates (SPCs): in Italy, according to Regulation (EC) No 469/2009, SPCs extend the protection of cer- tain medicinal and plant protection products by providing an additional period of exclusiv- ity beyond the expiration of a patent. There are also additional intellectual property rights for the protection of inventions, used, however, to a lesser extent, such as: • exclusive rights for new plant varieties; and • topographies of semiconductor products.
It is also worth mentioning that know-how (fall- ing within the definition of trade secrets) is regu- lated within the Italian IP Code and subject to the competence of the IP courts, even if it is not a proper exclusive IP right (as clarified by Directive (EU) 943/2016, whereas 16). In Italy, the protection of inventions is primarily governed by statutory law: nevertheless, over time, court decisions and interpretations have played a significant role in shaping the applica- tion and understanding of IP law. 1.2 Grant Procedure The grant procedure for the main IP rights can be summarised as below. Patents The process of a patent application begins with the filing of its constituent documents (descrip- tion, claims, any drawings), which must be draft- ed according to established criteria. The Italian Patent and Trademark Office (UIBM) conducts a preliminary administrative and tech- nical examination to check that the documents are complete, and the filing fees have been regularly paid. The UIBM also checks that the invention does not fall within the exceptions to patentability. If this first stage of examination is successful, the application is subject to a prior art search. In Italy, the EPO is responsible for drawing up the search report, which is free of charge for the Italian applicants and accompanied by a writ- ten opinion that involves assessing the novelty, inventive step and commercial applicability of the claimed invention (requirements for patent- ability). The search report and written opinion are usually drafted within six to eight months from the application date and sent to the application
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