Italian IP law set to be codified


As part of the Italian government's aim of rationalizing the entire intellectual property (IP) system, the minister for productive activities has issued draft proposals for a new IP code, which will amend and consolidate IP law.

Since the adoption of Law 273/02, a committee of experts appointed by the minister for productive activities has been charged with the task of revising all national legislation relating to industrial property and IP so that it can be replaced with a new consolidated code. The committee has analyzed legislation regarding patents, designs, trademarks, geographical indications, semiconductor topographies, new plant varieties and the protection of undisclosed information.

The resulting draft, if approved, is expected to:

  • simplify domestic IP legislation as the code will repeal 27 laws and provisions;

  • streamline administrative procedures; and

  • stiffen penalties for counterfeiters.

The final draft of the consolidated code presented by the minister for productive activities is divided into four books covering the various sectors of Italian IP law. The books are as follows:

  • Book I: General provisions and main principles;

  • Book II: Sections, which is subdivided into:

    o Trademarks,

    o Geographical indications,

    o Design rights,

    o Inventions,

    o Utility models,

    o Semiconductor topographies,

    o Undisclosed information,

    o New plant varieties,

    o Domain names;

  • Book III: Nature and ambit of validity of industrial property rights;

  • Book IV: Acquisition and maintenance of industrial property rights and relevant procedures.

The draft code has been submitted to various interested parties for comment and is set to be brought before Parliament for approval in June 2004.

A number of these interested parties have already noted that the draft code seems incomplete as it does not include specific provisions on certain important fields, most notably, copyright and related rights, unfair competition and unregistered signs. The absence of such provisions seems strange as they are closely related to the other IP rights and assets protected by the new consolidated code. Furthermore, the IP issues currently excluded from the code are likely to fall, under certain circumstances, within the jurisdiction of the specialized IP courts created by Law 168 of June 27 2003, which will have to apply the consolidated code once approved (see, Italy sets up specialized IP courts).

Despite the apparent inconsistencies, the consolidated code marks an important step in the Italian government's move towards an improved and more efficient IP system.

Pietro Pouchè, McDermott Will & Emery - Carnelutti Studio Legale Associato, Milan

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