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How to protect and license your IP in Italy

Date: 28 July 2009

Keywords (click to search): outbound investment Italy IP intellectual property


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Luigi Bendi and Gianluca D’Agnolo
Chiomenti Studio Legale,

Italy has enacted two significant pieces of legislation for the protection of intellectual property, namely:

• Legislative Decree n. 30 of February 10 2005 (the so-called Industrial Property Code); and

• Law n. 633 of April 22 1941 – as subsequently amended – the Copyright Law

Italy has entered into the following conventions and treaties:

(i) Paris Convention for the Protection of Industrial Property (Stockholm text), signed on March 20 1883;

(ii) Berne Convention for the Protection of Literary and Artistic Works (Paris text), signed on September 9 1886;

(iii) Madrid Agreement concerning the International Registration of Marks (Stockholm text), signed on April 14 1891;

(iv) Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (Lisbon text and Stockholm Integration), signed on April 14 1891;

(v) Universal Copyright Convention (Paris text), signed on September 6 1952;

(vi) Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (Geneva text), signed on June 15 1957;

(vii) Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (Stockholm text), signed on October 31 1958;

(viii) Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, signed on October 26 1961;

(ix) International Convention for the Protection of New Varieties of Plants (Geneva text), signed on December 2 1961;

(x) Locarno Agreement establishing an International Classification for Industrial Designs, signed on October 8 1968;

(xi) Patent Cooperation Treaty (PCT), signed on June 19 1970;

(xii) Strasbourg Agreement concerning the International Patent Classification, signed on March 24 1971;

(xiii) Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, signed on October 29 1971;

(xiv) European Patent Convention (EPC), signed on October 5 1973;

(xv) Brussels Convention relating to the Distribution of Program-Carrying Signals Transmitted by Satellite, signed on May 21 1974;

(xvi) Budapest Treaty on the International Recognition of the Deposit of microorganisms for the Purposes of Patent Procedure, signed on April 28 1977;

(xvii) Nairobi Treaty on the Protection of the Olympic Symbol, signed on September 26 1981;

(xviii) Protocol relating to the Madrid Agreement concerning the International Registration of Marks, signed on June 27 1989;

(xix) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), signed on April 15 1994;

(xx) WIPO Copyright Treaty (WCT), signed on December 20 1996 (not ratified);

(xxi) WIPO Performances and Phonograms Treaty (WPPT) signed on December 20 1996 (not ratified); and

(xxii) Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs, signed on July 2 1999.

Patents, trade marks, copyright protection

Patent and trade mark applications are filed with the Italian Patents and Trademarks Office (PTO), either directly or through local offices. In particular, patents are granted for a period of 20 years from the filing date and cannot be extended. Conversely, legal protection for trade marks lasts for 10 years and may be renewed for further 10-year terms.

Copyright protection is generally granted for the lifetime of the author plus 70 years, and in the event of collective works, the copyright protection lasts 70 years after the death of the last co-author. Know-how is protected by several provisions of:

(i) the Italian Civil Code related to unfair competition;

(ii) the Italian Criminal Code; and

(iii) the Industrial Property Code.

Economic rights

The assignment of economic rights related to a patent or trade mark must be registered with the PTO in order to be effective with regard to third parties. The registration of a deed of assignment of patent rights must be legalised by a notary public, whereas the assignment of trade mark rights may be recorded by a simple declaration of transfer executed by the assignor and the assignee without notarial formalities.

• Italy has neither regulatory guidelines for licences nor a system of governmental approval for intellectual property licensing or payment of royalties. Evidence of the assignment or licence of copyrights must be given in writing.

• Italian intellectual property laws provide for particular requirements / exceptions related to certain products, such as new varieties of plants and pharmaceutical products which are subject to a strict administrative licensing procedure.

• In Italy, there are no specific provisions on payment of royalties. Provisions on transfer pricing are to be taken into account when transactions between related companies are to be carried out.

• Local antitrust and/or competition laws do apply to licences.

• In general, typical agreements between foreign companies and wholly-owned subsidiaries are licensing agreements.