Technology Transfer and Intellectual Property Enhancement: The New Industrial Property Code

The draft law amends several points of the old 2005 text.

In Italy, as in other Western countries, patents resulting from research carried out by university researchers, public research bodies and scientific institutes will be owned by the institution. This will facilitate technology transfer and the valorisation of inventions. This is one of the key points of the new Industrial Property Code, one of the reforms included in the National Recovery and Resilience Plan (PNRR), which has been approved by Parliament.

The draft law, which amends the old 2005 code, addresses several key issues, with one of the key changes being the reversal of the so-called “professorial privilege“, which refers to the transfer of invention-related rights from researchers to their affiliated institutions, including universities, public research institutions and scientific hospitals and research institutes (IRCCS).

Article 3 of the Draft Law completely changes the previous regime, stipulating that the rights to an invention belong to the inventor’s affiliated institution, unless the same institution files the patent application or waives its rights within a maximum of 9 months.

In any case, the inventor is entitled to compensation of at least 50% of the income derived from the economic exploitation of the invention, after deduction of the costs incurred by the university, the public body or the IRCCS in connection with the filing, registration and renewal of the patent.

Concrete measures for technology transfer are also introduced.

Article 4 allows universities and public research institutes to set up a technology transfer office for the valorisation of industrial property rights, including through cooperation with businesses.

Stricter measures against counterfeiting and registration procedures are introduced, allowing the financial police to seize counterfeit products directly during a trade fair. Currently, items suspected of infringing IP rights can only be described and photographed for evidence purposes, except in cases of criminal justice. Provisional protection is also provided for designs and models exhibited at official trade fairs, allowing the applicant to claim “exhibition priority”.

More flexible relations between businesses and universities

The new Article 65, which deals with inventions resulting from research funded by businesses. This promotes flexibility in the relationship between companies and universities, with criteria to be established within 60 days by the Ministry of Enterprises and Made in Italy, in collaboration with the Ministry of Universities and Research.

The protection system for geographical indications, a fundamental asset for Italy, will also be strengthened. The possibilities for combating imitations of PDO (Protected Designation of Origin) and PGI (Protected Geographical Indication) products, which are a hallmark of Made in Italy, are extended.

Prior checking of patent applications

Article 8 reinforces the preventive control over patent applications useful for national defense. The scope of the prohibition on filing an application without ministerial authorization is extended to two cases: if the inventor works for Italian branches of multinational companies whose parent company is headquartered abroad or if the inventor has transferred the invention subject to the patent before filing.