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27 September 2010
The Code of Industrial Property has recently undergone wide-ranging changes. As redrawn, it seeks to ensure that Italy's IP framework is consistent with international and EU norms, and provides protection for specific forms of IP right on the basis of their real-world value (for further details please see "Overhaul of Code of Industrial Property: origins and effects on trademarks").
The fundamental nature of the changes is perhaps most clearly seen in the field of patents and technological innovation. As in other areas, the updated provisions aim to give Italy a sound basis for growth in innovation, which plays a key role in the competitiveness of the national economy. The changes were largely inspired by the most recent version of the European Patent Convention. This approach was intended to minimise disparity between the treatment of Italian and EU patents.
The updated code incorporates the new provision of the convention's interpretation protocol which delimits the applicability of the notion of equivalence. The inclusion is significant because Italian case law has been worryingly unclear on this point in the past. The code also incorporates the provision concerning a judge's competence to redefine claims at the owner's request, provided that the redefined claims are "in a more restricted form which remains within the limits of the filed prior patent application" - that is, within the limits that the convention sets for recourse to the limitation procedure. The centrality of the claims in the interpretation of a patent is consistent with the European Patent Office guidelines, which are based on the so-called 'problem-solution' approach. This approach seeks to objectify the evaluation of the requirements for protection and set them in a realistic context, while also ensuring that the protection is commensurate to that sought by the applicant at the time of application.
For undisclosed commercial and industrial information, the rewording of the relevant rule aligns it with the Agreement on Trade-Related Aspects of Intellectual Property Rights. This resolves the problems caused by the divergent (and clearly erroneous) interpretation that seemed to afford unlimited protection to such information. As has now been specified, protection is limited to those cases in which undisclosed information has been obtained unlawfully by breaching the information owner's privacy or confidentiality.
In the field of biotechnology, the inclusion in the code of rules that were hurriedly approved in 2006 by government decree, under the pressure of EU infringement proceedings, represented an opportunity not only to remove duplicate rules that might confuse questions of interpretation, but also to clarify that filing statements on the origin of biological material used in an invention is merely an option for the applicant, not a prerequisite. Adopting the latter interpretation would have set the Italian system at odds with all other EU states. It is also clear that the penalties which the enabling act set for the violations in this area have no consequences for the validity of the patent, but are merely imposed in respect of the administrative infringement.
However, some parts of the IP community will regret a lost opportunity in the reform. The government ultimately chose not to follow the enabling act in requiring that the ownership of inventions by researchers in universities and other public research institutions be retained by the institution in question. The ownership rule was repealed in 2001 by a law whereby the patent rights in such inventions are always owned by the researchers. However, the revised code at least retains the rule approved in 2005 that allows universities to assign inventions in cases where third parties have financed research - a provision introduced in order not to discourage synergy between the private and public sectors, which is particularly important in this field.
As far as employees' inventions are concerned, the choice of granting the inventor a fair remuneration not only when the employer patents his or her invention, but also when it is exploited under the regime of undisclosed information, will certainly provoke debate, even though it is the only constitutionally correct way of tackling the problem. The basis for defining a fair award has been clarified according to the position taken in leading Italian case law.
At its core, the reformed code takes a realistic approach to patent law. Together with procedural changes that aim to facilitate protection and encourage out-of-court dispute settlement, it will consolidate the positive results already achieved in recent Italian case law and will help to persuade both Italian and foreign enterprises that patenting pays in Italy.
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