ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
be divided or entirely borne by the losing party. Certain costs, such as the “cost of reaction”, can be refunded as part of the damage suffered due to the adversary infringement. 9. Alternative Dispute Resolution 9.1 Type of Actions for Intellectual Property Alternative dispute resolution (ADR) options are available and include mediation, arbitration, expedited arbitration and expert determination. ADR is not a common way of settling an intellec- tual property case (even if it is not uncommon for the parties to settle the case – usually under the advice of their respective lawyers – after having commenced a lawsuit). 10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights Assigning an intellectual property right is pos- sible by the legitimate right-owner (in the case of patents, the inventor always maintains its authorship on the invention). In order to be opposable to third parties, the assignment shall be in writing and properly recorded before the UIBM ( trascrizione ). 10.2 Procedure for Assigning an Intellectual Property Right Usually, the assignment of an intellectual prop- erty right is provided in a single agreement or is part of a bigger inter-company strategy (eg, M&A or IP-driven acquisitions). The intellectual prop- erty right at issue shall be precisely identified, as well as the owners and authors and the price. In (rare) cases, should the patent not be filed or
registered, it is advisable to include undertakings for keeping the invention secret. The assignment must be notified to the relevant patent office in order to be recorded in the public patent register ( trascrizione ). 10.3 Requirements or Restrictions to License an Intellectual Property Right The licensing of an intellectual property right is possible by the legitimate right-owner. It is always advisable to proceed in writing, but case law also admits the existence of an “implied licence” that can be proven by witness state- ments. The written licence does not require any registra- tion for its validity and should not be approved by any authority. 10.4 Procedure for Licensing an Intellectual Property Right In general, licensing in Italy is significantly subject to compliance with the binding rules of Commission Regulation (EU) No 316/2014. The intellectual property right at issue shall be precisely identified, as well as the owners and authors and the royalties to be paid by the licen- see. The licence can be exclusive or non-exclu- sive. The licensor can also restrict the licence to certain countries an/or to certain products only. The licence agreement shall also define the duration of the licence and define certain limits of the licensee (eg, whether they can or cannot sub-license the patent) or how to deal with patent improvements referable to the licen- see. The licence agreement can be notified by any party to the relevant patent office in order to be recorded in the public patent register ( tras- crizione ).
296 CHAMBERS.COM
Powered by FlippingBook