All intellectual property rights, save copyright, are covered by the 2005-released Italian Industrial Property Code. The IPC had a major revision and received an Implementing Regulation five years later, in 2010.
The Implementing Regulation has been improved with the most current decree No. 119, which went into effect in September 2021.
With an emphasis on patent-related issues, this article analyzes the IPC’s Implementing Regulation.
The formal adjustments, clarifications, and simplifications that the decree made to the rule may be broadly divided into three categories.
Modifications that promote harmonisation of national legal systems and provide adaptations to the progress of EU legislation, particularly regarding digitalization, make clarification and simplification changes of particular relevance.
Article 1 is revised to clarify that when a joint applicant from a group of applicants desires to act on behalf of all applicants, his authorization must state that he is authorized to do so.
When a deadline falls on a Saturday, Sunday, or on a holiday, a modified article 3 makes it clear that the payment of fees is also subject to extensions until the next working day.
Amended article 38 provides more explanation. The office costs for patent applications are also required when a university is one of the joint applicants, while another joint applicant is not a university, according to article 38, as modified.
Article 42 addresses the submission of a patent application in which the applicant specifies that one or more papers are missing at the time of filing but will be submitted later, within two months. Article 42 has now been changed to make it clear what happens if the applicant doesn’t send the paperwork in within the allotted two months.
Simplifications
Among the simplifications, article 10 states that the Italian Patent Office (UIBM) will ensure that the change of ownership for the relevant Italian aspects of a European patent is entered in its own register if a change of ownership for a European patent validated in Italy is entered in the register of the European Patent Office (EPO) and such a change is communicated to the latter.
A further simplification is provided by new article 24bis, which states that the patentee must inform the UIBM of the amended text of the patent when a court has decided to maintain the patent in amended form as a result of a nullity action against the patent or of a limitation request by the patentee under article 79 IPC.
Article 33, which is concerned with file examination, is also subject to change. The applicant of a patent application no longer has the option to request that the file be kept secret, whereby file inspection is always available, in accordance with article 33 as it currently stands, unless the patent application had been deemed not received by the UIBM or had been withdrawn by the applicant within the secrecy period.
As a result, the 2011 modifications made to the implementing rule offer various opportunities for procedure clarification and simplification, including in the context of patents. We must note, however, that there are still a number of areas of substantive patent law that are not yet unified.
For example, the circumstances under which an applicant is allowed to amend or to correct the text of the patent application or to file a divisional application, and the relevant criteria to be fulfilled, could be set out more precisely.
Another illustration is that the UIBM does not now notify the applicant of the intention to grant the patent.
The perception is that a more significant step should be required to harmonize Italian patent law with the European Patent Convention. This might not be possible with the implementing rule; instead, it would need for a more significant revision to the IPC, which appears to be in the works right now.
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