News Patents and designs 2009

Provisions on the Development and Internationalisation of businesses and in relation to energy

Law No. 99 of 23 July 2009 “Provisions on the Development and Internationalisation of businesses and in relation to energy” was published in the Official Gazette of 31st July 2009. The law, which will come into force on 15 August, includes several regulations on Intellectual Property.

A) In particular, at articles 15-17, the law, after nearly eighty years, has re-addressed the issue of criminal protection of intellectual property rights. Inter alia, the law:

1) generally makes penalties stricter, although it recognizes:

i) clear extenuating circumstances to the indicted person collaborating to concretely help police or judicial authorities in contrasting such offences and in collecting key elements for reconstructing facts and identifying or capturing accessories, or for identifying the means needed to commit the same offences or the profits resulting therefrom;

ii) significant aggravating circumstances in those cases where, on the contrary, the same person acted in a systematic way by setting up means and organised activities;

2) standardises, to effectively combat the most serious cases, the case of a criminal association for the purposes of counterfeiting;

3) recognises, in the most important cases, the possibility to resort to the so-called agent provocateur in the preliminary investigation phase;

4) provides for confiscation of that which served or was destined for committing the crime of counterfeiting and of that which derives therefrom such as the product, the price or the profit, to whomever it should belong;

5) standardises responsibility for entities which have not taken sufficient measures to prevent such crimes being committed;

6) provides for new means to combat counterfeiting of geographical indications or denominations of origin in respect of agricultural foods;

7) provides for the seizure of those goods put on the market when the same goods bear labels which are not consistent with the effective origin and quality of the goods;

B) furthermore, at Art. 19, entitled generally “Industrial Property”, a few significant novelties have been introduced, among which:

1) the new clause 3-bis of Art. 47 (non-objectionable divulgences) of the Industrial Property Code related to the possibility to claim the “internal priority” for invention patents and utility model applications, i.e. an Italian application will be able to claim the priority of another, earlier Italian application;

2) the new version of Art. 134 of the Industrial Property Code (Competence Regulations) regulating, in a more organic way, devolution of disputes to the cognizance of Specialised Sections in Intellectual Property;

3) the new Art. 239 of the Industrial Property Code (Restrictions to copyright protection) further specifies the restrictions granted by the copyright in respect of goods made in accordance with drawings or models which had become of public domain;

4) the institution, at the Ministry of Economic Development, of the National Anti-Counterfeiting Council;

5) the delegation to the Government for the adoption of a series of correcting or supplementary measures, among which:

i) the introduction of means for simplifying or reducing administrative obligations;

ii) the introduction of amendments to Art. 65 of the Industrial Property Code (Inventions of university researchers and public research bodies);

iii) the recognition of the possibility for municipalities to file trademark applications for commercial purposes with limits on the destination of the relative proceeds.

C) In conclusion, the Law introduces, at Art. 20, amendments (increases) to the virtual stamp duty for trade marks and patents.

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