Patent Cooperation Treaty patents allowed

The so-called 'Growth Decree' (Decree-Law 34 of 30 April 2019, approved by Parliament with amendments as Law 58 of 28 June 2019) includes a rule concerning patents.

Owing to the Italian Patent and Trademark Office's (UIBM's) initiative, the 'Growth Decree' includes a rule (prepared by a working group of experts set up by the Directorate General) which allows an Italian patent application to be filed based on an international patent application filed under the Patent Cooperation Treaty.

The adoption of this provision (which has already been incorporated into the legal systems of many countries, including Germany) offers companies a cheaper alternative where the potential exploitation of an invention does not justify the investment required to obtain a European patent. The provision responds to a pressing practical need and is a welcome change.

However, despite the UIBM's request, a rule that restored ownership to universities and other public research bodies of inventions created by their researchers has not been adopted. This rule should have been, but was not, adopted as part of the 2010 reform in accordance with the proxy conferred on the government. As a result, the current rule, passed in 2001 by the Berlusconi government, remains in force and provides that the right to patent inventions created by researchers at universities and other public research institutions is granted to the inventors and the entities for which they work can claim only a share in any related profits. However, since 2010 this rule no longer applies to research funded by public or private third parties, as in such cases, the ownership of an invention is regulated by contract, which generally attributes such inventions to the funder.

For further information on this topic please contact Cesare Galli at IP Law Galli by telephone (+39 02 5412 3094) or email (galli.mi@iplawgalli.it). The IP Law Galli website can be accessed at www.iplawgalli.it.