October 9, 2023 Ecosystem

The reform of Italian industrial property law and the abolition of “Professor Privilege”

Recently, the reform of Italian industrial property law and the abolition of the so-called “Professor Privilege” was formalised through a joint inter-ministerial decree issued by the Ministry of Enterprise and Made in Italy (MIMIT) and the Ministry of University and Research (MUR).

The reform was achieved by approving a law amending the Industrial Property Code (Law No. 102 of 24 July 2023). The new law facilitates access to the industrial property system and strengthens the importance of patents, trademarks and designs within the production sector. It also streamlines technology transfer processes by abolishing the so-called “Professor Privilege”.

The main changes to the reform can be summarised as follows:

  • Ownership of patents: patents from research conducted by researchers at universities, public research institutions and institutes will be owned by the respective institutions. This will significantly simplify technology transfer processes and the exploitation of inventions (for more details, see the section “The abolition of the Professor Privilege” below).
  • Design protection: the reform introduces the possibility of obtaining specific protection for designs presented at national and international fairs.
  • Counterfeiting: the reform introduces measures to combat counterfeiting, including the possibility of confiscating counterfeit products displayed at trade fairs.
  • Protection of geographical indications: the system of protection of geographical indications is strengthened with the extension of the situations in which it is possible to oppose the use of trademarks imitating Protected Designations of Origin (PDOs).
  • Flexibility in payments: introduction of the possibility to pay patent filing fees at the time of filing, but also at a later stage.
  • Inventions finances by businesses: the regulation of inventions generated through business funding will be defined later by the Ministry of Business and Made in Italy in collaboration with the Ministry of University and Research. The definition will maximise flexibility in relations between companies and university institutions.

THE ABOLITION OF THE PROFESSOR PRIVILEGE

The “Professor’s Privilege” was introduced in Italy with Law 383 of 18 October 2001.

The regulation attributed the ownership and patrimonial rights arising from patenting inventions directly to the researchers rather than to the university as their employer, as provided in Article 64 of the Industrial Property Code for employee inventions.

In the case of team inventions, the rights arising from the invention belonged to all inventors equally (unless otherwise agreed). The employer was entitled to a share in the exploitation of the invention (not less than 30%), which could be determined autonomously by the entity as long as at least 50% of the proceeds of such exploitation remained with the inventor.

This regulation was meant to respond to the inability of universities and other public research institutions to originate value from the intellectual property they created. However, it became a critical element in technology transfer processes.

Through the reform, the ownership of inventions is transferred to the organisation to which the inventor belongs, allowing the researcher to file the patent application independently only in the event of inactivity by that organisation.

This change will enable research institutions to effectively start innovation exploitation and technology transfer processes, improving our country’s competitiveness. The main objective is to bring Italy in line with the principal developed nations and to make collaboration between public research and the productive sector a reality, with positive impacts on the promotion of new technologies.


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For more info: https://uibm.mise.gov.it/index.php/it/approvato-il-disegno-di-legge-di-riforma-del-codice-della-proprieta-industriale; https://www.mimit.gov.it/it/notizie-stampa/pnrr-firmato-il-decreto-interministeriale-sulla-proprieta-industriale