The long-awaited amendment to the Italian Industrial Property Code (IPC) was finally enacted on September 2, 2010, by means of legislative decree No. 131/2010.

The main purposes of the decree are on the one hand to harmonize the code with changes introduced in the European Patent Convention (EPC 2000) and with national law provisions enacted after the entry into force of the code in the year 2005, and on the other hand to strengthen the protection of IP rights through measures aimed at reducing the length of lawsuits if not to avoid them.

In the light of EPC 2000, for instance, the Italian IPC now finally includes rules for validating in Italy those European Patents that have undergone limitations made centrally at the EPO, and introduces the possibility to file divisional applications on Italian patent applications also in the absence of a lack of unity objection from the Italian examiner.

Furthermore, the decree brings into the IPC the complete discipline regulating biotechnological inventions, which discipline was up to now comprised in separate law provisions.

Probably, the most innovative aspects introduced by the decree into the IPC are those ruling the possibility to request to the judge the arrangement of an official technical consultancy, with the appointment of a Court Expert, before a lawsuit is even brought, which consultancy may be joined by a settlement attempt. In fact, in the intentions of the legislator, this option should lead to a decrease of the number of conflicts actually reaching the lawsuit phase, if anything because through such anticipatory consultancy the patent owner should know whether its patent is valid and whether the infringement will be susceptible of being proven convincingly even before the lawsuit is started. In addition, the decree contains provisions supporting the possibility for the judge to order a technical consultancy also within summary proceedings.

The intent of shortening the duration of lawsuits is the basis also of the right of the patent holder, now granted by the decree, to limit the patent during the pendency of a nullity action.

The foregoing, together with other amendments simplifying filing and prosecution procedures, must be regarded as a confirmation of Italy’s growing interest in IP and as a concrete attempt to improve the rights of the IP owner, both from a substantial and procedural point of view.

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