Overview of the legal framework

Italy’s IP legal framework mainly relies on:

• Industrial Property Code (Codice della Proprietà Industriale, Decreto Legislativo n. 30/2005)

• Trademark Law (Titolo VII del Codice della Proprietà Industriale)

• Patent Law (Titolo II del Codice della Proprietà Industriale)

• Design Law (Titolo III del Codice della Proprietà Industriale)

• Copyright Law (Legge n. 633/1941 sul Diritto d’Autore)

The competent authority is the Italian Patent and Trademark Office (UIBM), headquartered in Rome.
Italy is a member of WIPO, the PCT, the Madrid system, the Hague Agreement, the Paris Convention and TRIPS,
and is one of the key member states of the EPO and EUIPO.

International cooperation and system alignment

• Italy is a core member of EPO, EUIPO and WIPO;

• European patents granted by the EPO can take effect directly in Italy;

• Trademarks and designs can obtain EU-wide protection via EUIPO;

• PPH agreements have been concluded with CNIPA, JPO and USPTO and others;

• Italy’s specialised IP court system is highly developed and enjoys strong international recognition.

Trademark system

Filing routes

• National trademark applications can be filed directly with UIBM;

• Or file an EU trade mark (EUTM) via EUIPO, which automatically takes effect in Italy;

• Or designate Italy via the Madrid Protocol.

Classification standard

• Applies the Nice Classification;

• Both single-class and multi-class applications are accepted.

Examination procedure

• Formality examination: around 1 month;

• Substantive examination: around 6–9 months;

• Opposition period: 3 months from the date of publication.

Use and renewal

• Registration term: 10 years, renewable indefinitely;

• Non-use for a continuous period of 5 years may lead to revocation.

Examination features

• Examination language: Italian;

• Examination focuses on distinctiveness and likelihood of confusion;

• An opposition system has been in place since 2011, with cases handled by UIBM;

• Applications and renewals can be filed via the UIBM Online Portal.

Patent system

Types of protection and term

• Invention patents (Brevetto per Invenzione): 20 years from the filing date;

• Utility models (Modello di Utilità): 10 years from the filing date.

Examination system

• Invention patents: substantive examination system;

• Average examination period: 24–36 months;

• Utility models: formality examination only; inventiveness is not assessed.

International routes

• Italy is a PCT contracting state, and PCT applications may enter the national phase;

• It is also an EPO member state, and European patents can be validated in Italy;

• Supports Patent Prosecution Highway (PPH) fast-track procedures.

System features

• Applies the ‘first-to-file’ system;

• Divisionals and supplementary applications are permitted;

• Examination language is Italian (an English specification may be attached);

• After grant, annual renewal fees must be paid to maintain the patent in force;

• Patent disputes are handled by specialised IP courts (Sezioni Specializzate in Materia d’Impresa).

Design protection

Legal basis

• Articles 31–44 of the Industrial Property Code (Titolo III).

Scope of protection

• The product’s appearance, lines, shape, patterns, colours and decorative features;

• Covers both industrial designs and handicraft products.

Term of protection

• Initial term of 5 years, renewable four times, up to a maximum of 25 years.

Examination procedure

• Examination period: around 1–2 months;

• Only formality examination is conducted; creativity is not assessed;

• Examination language: Italian.

System features

• A single registration is valid throughout the country;

• Multiple designs can be combined in one application;

• International design registration is available via the Hague Agreement;

• Official database: Banca Dati dei Disegni e Modelli – UIBM.