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This is an easy to use Patent Law Information.
For exact data information you have to refer to the Official Pubblications as
original sources.
Italian UtilityModel Law Info - EP Law Info
- E.P.Rules
ITALIAN PATENTS
LAW ON PATENTS FOR INVENTIONS
(Royal Decree No. 1127 of June 29, 1939, as last amended by Law No. 60 of
February 14, 1987)
Title I Patent Rights 1 to 11
Title II Subject Matter and Proprietor of the Patent
Chapter I Subject Matter of the Patent 12to17
Chapter II Proprietor of the Patent 18to26
Title III Application for Examination and Grant
of the Patent 27to43
Title IV Patent Fees 44to51
Title V Working, Forfeiture, Waiver, and
Nullity of the Patent 52to59quarter
Title VI Expropriation 60to65
Title VII Recordings 66to69
Title VII Administrative and Jurisdictional
Provisions 70to90bis
Title IX General and Transitional Provisions
Chapter I General Provisions 91to97
Chapter II Transitional Provisions of Decree of the President of the Republic
No. 338 of
June 22, 1979 98to103
TITLE I
PATENT RIGHTS
(Definition)
1. The rights inherent in a patent for an industrial invention consist of the
exclusive right to work the invention and to profit from it in the territory of
Italy, within the limits and under the conditions provided for by this decree,
This exclusive right shall extent also to trade in the product covered by the
invention, but shall be exhausted after that product has been put on the market
in the territory of Italy by the proprietor of the patent, or with his consent.
The exclusive right conferred by the patent right shall, regardless of the
subject matter of the invention, not extend to (a) acts done privately and for
non-commercial purposes, or the experimental purposes; (b) the extemporaneous
preparation for individual cases in a pharmacy of medicines so prepared.
(Right of Exclusive Use)
2. The patent covering a new industrial method or process shall have confer on
the patentee the right to the exclusive use of such method or process.
This exclusive use shall also include the putting on the market of the product
directly obtained by means of the new industrial method or process. If the product
is new, any other identical product shall, unless proved to the contrary, be
deemed to have been obtained by means of the method or process which is the
subject matter of the patent.
(Authorization to Use)
3. When the proprietor of a patent covering a new industrial method or process
supplies other persons with the means unequivocally intended to carry out the
subject matter of the patent, he is presumed to also to have granted such
person an authorization to use such method or process, provided that no
agreements to the contrary have been entered into.
(Effects and Duration of the Patent: .Availability to the Public)
4. The exclusive rights referred to in this decree shall be conferred by the
grant of the patent.
The effects of the patent shall commence on the date on which the application
accompanied by the specification and possible drawings is made available to the
public. .After a period of 18 months .from the date of filing of the
application, or from the date of priority, or after 90 days from the date of
filing of the application, if the applicant declared in his application that he
wished to make immediately available to the public, the Central Patent Office
shall lay the application, with the aforesaid attachments, open to the public.
With regard- to persons whom the applicant notified of his application, with
the specification and possible a~-drawings. he effects or the patent shall
commence on the date of such notification.
The patent shall have a term of 20 years as from the date of filing of the
application and it may not be renewed, nor may its term be extended.
(.Authorization of Working)
5. The patent for an industrial- invention. the working of which involves the
working of inventions protected by prior, still valid patents for industrial
inventions, may not be worked or used without the consent of the proprietors of
such a patent.
(Prior Use)
6. Any person who uses an invention in his business in the 12 months preceding
the date of filing of the patent application, or the date of priority, .may
continue to use it within the !limits of such prior use.
The right may be transferred only together with the business in which the
invention is being used. The burden of proving the prior use and its extent
shall rest with the prior user.
(Rights of the Inventor)
7. All rights deriving from industrial inventions may be assigned and
transferred, except the right to be recognised as the author thereof.
The right to be recognized as the author of an invention may, after the death
of the inventor, be claimed by the person designed by the inventor for this
purpose; in the absence of such designation, or after the death of the person
so designated, the aforesaid right may be claimed by the spouse or the
descendants to the second degree; in the absence or after the death, of such
person, it may be claimed by the parents and other ascendants, and in their
absence, or after their death, by relatives to and including the fourth degree.
8. (repealed)
9. (repealed)
Inventions of Interest for the National Defense
(Examination of the Inventions)
10. When exhibitions are to be held in the territory or, Italy, the
Ministry-.of or Defense shall have authority through his employees or officers
to perform a detailed examination of the articles and inventions delivered for
exhibition which may be considered useful for the military defense of the
country; moreover it shall have authority to gather information and request
clarification regarding such articles and inventions.
The organizers of exhibition must make available to the said employees or
officers complete lists of any articles to be exhibited which relate to
industrial inventions not protected under this degree.
The aforesaid employees and officers shall be entitled to prohibit the
organizers from exhibiting any articles which they consider useful for the
military defense of the country.
(Prohibition against Exhibition; Expropriation)
10bis. The Ministry of Defense shall give notice of such prohibition to the
executive committee of the exhibition and other interested persons by means of
a registered letter, with return receipt requested, warning them to comply with
the obligation to secrecy. The Executive Committee of the exhibition shall keep
the articles referred to in the last paragraph of the preceding Section and
shall observe secrecy about their nature, If the prohibition against the e
exhibition or articles is issued after such articles have been exhibited, they
shall be withdrawn forthwith, without, however, imposing the obligation to
secrecy.
For articles relating to inventions found useful for the military defense of
Italy, the Ministry of Defense shall in any case have authority to expropriate
the rights deriving from the invention in accordance with the provisions on
expropriation set forth in this decree.
(Sanctions)
11. Failure to comply with the prohibition against the exhibition of the
articles specified in Sections 10 and 10bis hereof shall render the persons
responsible for the illegitimate exhibition liable to payment of a fine of from
Lire 10,000 to Lire 5,000,000.
TITLE II
Subject Matter and Proprietor of the Patent
Chapter I: Subject Matter of the Patent
(Inventive Step and Industrial Application; Exclusions)
12. Any new invention involving an inventive step and susceptible of industrial
application may form the subject matter of a patent.
The following in particular shall not be regarded as inventions within the
meaning of the preceding paragraph.
(a) discoveries scientific theories and mathematical methods;
(b) schemes, rules and methods for performing men acts, playing games or doing
business and programs for computers
(c) presentations OF information.
The provisions of the preceding paragraph shall exclude patentability or the
subject matter referred to therein only to the extent to which the patent
application or the patent relates to discoveries, theories, schemes, rules,
methods, and programs as such.
Method for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body shall not be regarded
as inventions within the meaning of the first paragraph.
This provision shall not apply to products, in particular substance or
compositions, for use in any of these methods.
( Public Order; Morality; Animal Varieties; Biological Processes)
13. Inventions the publication or working of which could be contrary to public
order or morality may not form the subject matter of a patent; the working of
an invention shall not be deemed contrary to public order or morality merely
because it is prohibited by law or regulation.
Nor may animal varieties and essentially biological processes for their
production form the subject matter of a patent; this provision shall not apply
to microbiological processes and the products thereof.
(Novelty; State of the Art)
14. An invention shall be considered to be new if it does not form part of the
state or the art.
The state of the art shall be held to comprise everything made available to the
public in the territory of Italy or abroad by means of written or oral
description, by use or in any other way before the date filing of the patent
application.
Additionally, the content of Italian patent applications, or of European or
international patent applications designating Italy, is filed. of which the
dates of filing are prior to the date referred to in the preceding paragraph
and which were published or made available to the public on or after that date,
shall be considered as comprised in the state of the art.
The provisions of the preceding paragraphs shall not exclude the patentability
of any substance or composition comprised in the state of the art, provided
that it is intented for a new form of use.
(Prior Disclosure; Priority)
15. For the application of Section 14, a disclosure of the invention s' all not
be taken into consideration if it occurred in the six months preceding the
filing of the patent application and if was due to, or in consequence of, an
evident abuse to the prejudice of the applicant or his legal predecessor.
The fact that the disclosure occurred at official or officially recognized
exhibitions failing within the terms of the Convention on International
Exhibitions signed at Paris on November 22, 1928, and its later revisions, also
shall not be taken into consideration.
With respect to inventions for which priority is claimed under international
conventions, the existence of the novelty requirement provided for under
Section 14 must be evaluated with reference to the staring date of priority.
(Inventive Step)
16. An invention shall be considered as involving an inventive step if, having
regard to the state of the art. it is not obvious to a person skilled in the
art. If the state of the art. includes documents within the meaning of Section
14, paragraph 3, these documents are not to be considered in evaluating
inventive steps.
(Industrial Application)
17. An invention shall be considered as susceptible of industrial application
if it can be made or used in any kind of industry, including agriculture.
Chapter II: Proprietor of the Patent
(Author of the Invention)
18. The right to a patent shall belong to the author of the invention and his
successors in title, except as provided for in the Sections 23, 24, 25 hereof.
(Designation)
19. The applicant for a patent for an industrial invention may designate in his
application one or more persons on whom be confers the rights in the patent,
specifying the nature of such rights.
Such designations shall be entered in the Patent Register and the letters
patent, provided that notice of the acceptance by the person so designated
reaches the Central Patent Office prior to the grant of the patent.
(Several Inventors)
20. If an industrial invention has been developed by several persons, the
rights deriving from the patent shall, unless otherwise agreed upon, be
regulated by the provisions of the Civil Code on joint ownership.
Except for agreements to the contrary, the assignment of patent rights shall
impose on the assignee the obligation to pay the fees due; if rights are
assigned to several persons, either jointly or proportionally, all of them
shall be jointly liable to the payment of such fees.
(National treatment)
21. Foreigners may obtain patent rights for an industrial invention on the same
term and conditions as those fixed for Italian citizens.
Any benefits which foreigners persently enjoy, have enjoyed or will enjoy in
the territory of Italy under international conventions with regard to patents
on industrial inventions shall be extended to Italian citizens.
(Employees of the Central Patent Office)
22. Employees of the Central Patent Office may not, either directly or
indirectly, apply for patents for industrial inventions, or become assignees
thereof, until two years after the date of termination of their employment at
the Office.
( Employees Inventor)
23. When an industrial invention is developed in the course of the performance
or fulfilment of an employment contract or relationship in which the inventive
activity forms the purpose of the contract or relationship, and the activity is
compensated accordingly, the rights deriving from the invention shall belong to
the employer, without prejudice to the right of the inventor to be recognized
as such.
If no compensation is stipulated and fixed for the inventive activity and the
invention has been developed in the course of the performance or fulfilment of
an employment contract or relationship, the rights deriving from the invention
shall belong to the employer, but the inventor shall, in addition to hid right
to be recognized as such, be entitled to fair compensation, the amount of which
shall be commensurate with the value of the invention.
(Right or Preemption of the Employer)
24. If the conditions provided for the preceding section do not exist, but the
industrial invention falls within the field of activity of the private
enterprise or the public administration in which the inventor is employed, the
employer shall have the right of preemption with regard to the exclusive or
non-exclusive use of the invention or to the acquisition of the patent as well
as the right to apply for or acquire patents for the same invention in foreign
countries, against payment of a royalty or price to be fixed after deduction of
en amount equivalent to the value of such assistance as the inventor may have
received from the employer in the development of the invention.
The employer may exercise the right of preemption within three months from the
receipt of the notice informing him of the invention.
The relationship ensuing from the exercise of the right of preemption provided
for in this Section shall terminate de jure if the fixed compensation is not
paid in full by the date on which it is due.
(Arbitration)
25. If, in the case provided for by the preceding Sections, no agreement can be
reached on the compensation, royalty or price, or on terms and conditions
relative thereto, a decision thereon shall be taken by a Board of Arbitration
consisting of three members, one to be appointed by each of the parties and the
third by the first two, or, in case of disagreement, by the President of the
court of the place where the employee ordinarily performs his duties.
(Inventions Made in the Framework of an Employment Contract)
26. For the purpose of the preceding Sections, an industrial invention shall be
considered as developed during the performance of an employment contract or
relationship, when a patent for the invention has been applied for within one
year from the date on which the inventor left the service of the private
enterprise or public administration in whose field of activity the invention
falls.
TITLE III
Application for Examination and Grant of the Patent
(Filing of the Application)
27. A patent application may be filed by any person entitled thereto under this
decree.
In the proceedings before the Central Patent Office, the applicant shall be
deemed to own the right to the patent and to be entitled to exercise it.
(Rights Belonging to a Person Other than the Applicant)
27bis If by a final decision it is adjudged that the right to the patent
belongs to a person other than the applicant, that person may, provided that
the patent has not yet been granted and within three months after the decision
has become final, at his discretion: (a) prosecute the patent application in
his own name, assuming for all purposes the quality of the applicant; (b) file
a new patent application, which, to the extent to which its contents do not go
beyond those of the first application, shall be effective as of the filing
date, or the priority date, of the original application, which shall in any
case cease to produce effects; (c) cause the application to be refused.
If the patent has already be granted to person other than the one entitled to
it, the latter may, at his discretion:
(a) cause the patent to be transferred to his name by a decision having
retroactive effect;
(b) claim nullity of the patent granted to a person not entitled to it.
If two years have elapsed from the date of publication provided for by Section
38, paragraph 1, and the person entitled to the patent has failed to exercise
any of the rights provided for in the preceding paragraphs, any interested
person may claim nullity of the patent granted to a person not entitled to it.
The aforesaid Ministry shall decide the petitions for the grant of the
authorization after obtaining an opinion thereon from the Ministry of Defense.
If no denial is issued within a period- of 90 days, the authorization shall be
deemed to be granted.
Any violation of the provisions contained in the first paragraph of this
Section shall, unless it constitutes a heavier offense , be penalized with a
fine of not less than Lire 30,000, or with imprisionment.
If the violation was committed after the denial of the authorization,
imprisionment for not less than one year shall be imposed.
(Disclosure of the Invention; Microbiological inventions; Documents to be
Submitted)
28. Patent applications for industrial inventions shall be accompanied by a
specification and the drawings required for their understanding.
The invention must be disclosed in a manner sufficiently clear and complete for
it to be carried out by any person skilled in the art and must bear a title
corresponding to its subject matter.
If an invention concerns a microbiological process or the product thereof and
involves use of a microorganism which is not available to the public and which
cannot be disclosed in such a manner as to enable a person skilled in the art
to carry out the invention, the patent application must, with regard to the
specification, comply with the rules established in the regulation of such
priority.
(Unity of Invention)
29. Each application shall relate to one invention only.
If an application relates to several inventions, the Central Patent Office
shall request the applicant to limit his application to one of the inventions
within a fixed deadline; the application shall have the right to file, for the
remaining inventions, as many applications as necessary, which shall be
effective as of the filing date of the original application.
Appeals to the Board of Appeals provided for by this decree shall suspend the
deadline fixed by the Central Patent Office.
30. (repealed)
(Examination of the Application)
31. The examination of the application, the formal correctness of which has
been recognized and the title of which has been found to correspond with the
subject matter of the invention, shall be aimed as ascertaining whether the
invention meets the provisions of Section 12 and is not in conflict with those
of Section 13 hereof.
The examination shall not concern itself with the technical or economic value
of the invention.
If the aforesaid conditions are found not to have been met, the Central Patent
Office shall reject the application.
32. (repealed)
(Notice Concerning Working)
33. All patents issued by the Central Patent Office shall bear a notice to the
effect that the inventions which are the subject matter thereof may be worked
only in compliance with the laws and regulations concerning the production of
end the trade in the products covered by the invention.
34. (repealed)
(Notice of Total or Partial Rejection of the Patent Application)
35. Notice of the decision in which the Central Patent Office rejects the
application, or grants it only in part, shall be given to the applicant, who shall
have the right the file an appeal against the same within a period of 30 days
from the date of such a notice.
The inventor, whose request for the entry of his name in the Patent Register
and the letters patent has been rejected by the Central Patent Office, shall
have the right to appeal within the same period of time.
(Appeals)
36. Appeals shall be decided by the Board of Appeals provided for in Section 71
of this decree, which Board shall render its decisions after bearing the
interested parties, or their appointees or representatives, and considering
their written arguments.
The appeal provided for by a second paragraph of the preceding Section shall
not interrupt the prosecution of the procedure for the grant of the patent,
without prejudice to the right of the inventor to have his name entered in the
Patent Register and the letters patent.
(Legal Actions Concerning the Validity of the Patent)
37. The grant of the patent shall not prevent the institution of legal actions
concerning the validity of the patent and the rights deriving from the
invention.
(Publication and Notification)
38. The Central Patent Office shall publish a notice of all patents granted in
the Patent Bulletin provided for in Section 97 hereof.
After the grant of the patent, the specification and drawings laid open to the
public shall be printed.
The printed copy and the publication of the Bulletin shall include the name of
the inventor.
(Designation of the Inventor)
39. The Central Patent Office shall not verify whether the designation of the
inventor is correct.
An incomplete or incorrect designation of the inventor may be rectified only
upon request, accompanied by a declaration of consent of the person previously
designated and, in the event of the request not being filed by the applicant or
the proprietor of the patent, also by a declaration of the consent of the
latter.
In the event of a third party filing with the Central Patent Office a final
decision whereby the applicant for, or the proprietor of a patent is required
to designate him as the inventor, the Central Patent Office shall enter his
name in the Patent Register and publish a notice in the Bulletin; The
provisions of Sections 35 and 36 shall be valid in the cases referred to in the
preceding paragraphs, to the extent to which they are applicable.
40. [repealed]
(Postponement of the Grant of the Patent)
40bis At the request of foreign States which grant reciprocal treatment to
Italy, The Ministry of Defense may request the postponement, for a period which
may also exceed three years, of the grant of the patent and of any publication
relating to the invention for the patent applications already filed in foreign
countries where they are subject to compliance with the obligation to secrecy.
Possible indemnities shall be paid by the foreign State which made the request.
(Obligation to Secrecy Concerning the Patent of Which the Grant is Postponed)
41. The invention shall be kept secret after the notice is given of the request
for postponement and for the entire duration of the postponement, as well as
during the expropriation procedure and after the decree relating thereto is
issued, if it provides for an obligation to secrecy.
The invention must also be kept secret under the conditions provided by the
preceding Section 10, paragraph 2, after the service of notice on the
interested person of the decision ordering to proceed with expropriation under
an obligation to secrecy.
The obligation to observe secrecy shall be lifted, however, if the competent
Ministry it permits.
Any violation of secrecy shall be punished in accordance with Section 262 of
the Penal Code.
42. The aforementioned Ministries and the establishments subordinate thereto
may request that the patent applications for the industrial inventions filed by
them be kept secret.
43. If, for an invention of interest to the military defense of Italy, the
competent Ministry requests or, in case of postponement as provided for by
Section 40, consents to its grant, the procedure relative thereto shall, as the
request of the Ministry, be conducted in secret. In such case, no publication
shall take place, and the public inspection referred to in this decree shall
not be allowed.
TITLE IV
Patent Fees
(Kinds of Fees)
44. Patents for industrial inventions shall be subject to payment of the
following fees:
(1) an application fee
(2) an annual fee to be paid to maintain the validity of the patent
(3) a fee for the printed publication of the specification and the drawings.
45. (repealed)
(Rejection and Withdrawal of the Application; Refund of Fees)
46. The application fee, the annual fee for the first three year period and the
printing fee shall be paid prior to the filing of the application.
If the application is rejected or withdrawn before the patent is granted, the
amounts paid shall be refunded, except the application fee.
(Subsequent and Annual Fees)
47. The annual fees due after payment or the first three-year fee shall be paid
in advance within the same month as the one in which the application was filed.
After expiration of this term, pavement shall be allowed within the following
six months, with. imposition or an additional fee.
Any number of annual .fees may be paid in advance.
(Due Dates)
48. Within four months following the date on which the patent was granted any
annual fee possibly due, or failing due, within such period may be paid without
imposition of the additional fee.
After the expiration of this term, payment shall be allowed within the
following six months with imposition of the additional fee.
(Excusable Mistake; Belated Regularization)
49. If the incomplete or otherwise irregular payment of an annual fees is due
to an obvious mistake or another excusable reason, the Central Patent Office
may, at the request of the interested person, permit a belated payment, or a
regularization of the payment.
If the Central Patent Office rejects such request, the interested party may
appeal to the Board of Appeals within 30 days from the date on which he was
given notice of the rejection.
(Offer of the Non-Exclusive Licenses; Effects; Compensation)
50. If no exclusive license is recorded, the applicant for, or the proprietor
of a patent may, in his applications or in a written statement, addressed to
the Central Patent Office, offer the public a license for the non-exclusive use
of the invention.
Such license shall take effect from the date on which the proprietor is
notified that his offer has been accepted, even if the compensation has not
been accepted. In this case, its amount and the terms of the payment shall be
determined by a Board of Arbitration, consisting of three members, one to be
appointed by each of the parties and the third by the first two or, in case of
disagreement, by the President of the Board of Appeals.
The Board of Arbitration shall base its award on a fair evaluation. If its
award is clearly unfair or wrong or if one of the parties refuses to appoint
its arbitrator, the matter shall be decided by a judge.
If circumstances have arisen or become known which render the compensation
already determined obviously inappropriate, the compensation may be reviewed in
the same manner as provided for the original compensation.
The applicator; or the proprietor of, a patent who offered the public a license
under his patent shall be entitled to a 50% reduction of the annual fees. Such
reduction shall be granted by the Central Patent Office.
The statement of the offer shall be entered in the Patent Register and
published in the Bulletin, and its effects shall last as long as the offer is
not withdrawn.
(Indigent Inventor)
51. The Ministry of Industry, Commerce and Handicrafts may exempt an inventor
who proves that he is indigent from payment of the printing fee and may
authorize him to suspend payment of annual fees for the sixth year, but also
all the arrears; failure to make such payments shall entail forfeiture of the
patent, whereafter the inventor shall not be obligated to pay the fees for the
years already elapsed.
Title V
Working, Forfeiture, Waiver and Nullity of the Patent
(Working of the Invention)
52. The industrial invention which forms the subject matter of a patent must be
worked in the territory of Italy to an extent not seriously disproportionate to
the needs of the country.
Inventions concerning objects which appear for the first time at an official,
or officially recognized, exhibition held in the territory of Italy, shall be
deemed to be worked from the date they were introduced into the exhibition for
not less than ten days, or, in case the duration of the exhibition is shorter,
for its entire duration.
53. The introduction into or the sale in the territory of Italy of items
manufactured in foreign countries does not constitute working of the invention.
(Conditions for Obtaining a Compulsory License)
54. If after three years from the date of grant of the patent, or four years
from the filing date of the application, whichever is later, the proprietor of
the patent or his successor in the title has not worked the patented invention
in the territory of Italy, directly r through one or more licensees, or has
worked it to an extent seriously disproportionate to the needs of the country,
a compulsory license for the non-exclusive use of the invention may be granted
to any person applying for it.
The compulsory license referred to in the preceding paragraph may also be
granted if:
(1) the working of the invention has for more than three years been suspended
or reduced to an extent seriously disproportionate to the needs of the country;
(2) the patented invention cannot be worked without prejudice to the patent
rights inherent in a patent granted on an earlier application. In such case,
the license may be granted to the owner of the more recent patent to the extent
necessary to permit him to exploit the invention, provided that the latter
represents a significant technical improvement with regard to the earlier
patent. If both inventions have the same industrial purpose, the compulsory
license shall be granted only on the condition that the owner of the earlier
patent may be granted a license for the more recent patent, if he requests that
this condition be set.
Any person who applies for a compulsory license as provided for under the
preceding paragraphs must prove that he previously approached the owner of the
patent, but was unable to obtain from the same a contractual license on fair
terms.
The provisions of this Section shall apply neither to patented inventions
belonging to the Military Administration, nor to inventions kept secret in
accordance with Section 41 of this decree.
(Refusal of the Compulsory License; Equitable Compensation; Counterfeits; Legal
Proceedings)
54bis. A compulsory license shall not be granted if the failure to work the
patent invention, or to work it adequately, is due to cause beyond the control
of the proprietor of the patent or his successor entitle. Such causes shall not
include the lack of financial means, and, if the product is widely circulated
in foreign countries, the lack of demand on the domestic market for the patent
product, or the product obtained by the patented process.
A compulsory license may not be granted to a counterfeit of an invention.
Compulsory licenses may be granted for a period not exceeding the remaining
duration of the patent, and, except with the consent of the proprietor of the
patent or his successor in title; may be transferred only together with the
licence's business, or with the particular branch of the business in which the
license is used.
The grant of a compulsory license shall not prevent the institution of legal
proceedings concerning the validity of the patent or the rights deriving
therefrom, including actions instituted by the licensee.
(Obligation to Work the Invention; Lapse of the Patent)
54ter. The grant of a compulsory license shall not exempt the proprietor of the
patent or his successor in title from the obligation to work the invention.
The patent shall lapse if the invention is not worked within two years from the
grant of the first compulsory license or has been worked on an extent seriously
disproportionate to the needs of the country.
(Procedure for the Grant of the Compulsory License)
54quarter. Any person who wishes to obtain a license as provided for under
Section 54 must file with the Central Patent Office application providing the
grounds therefor and the amount and the terms of the compensation offered. The
Central Patent Office shall promptly inform the proprietor of the patent and
any person who acquired rights in the patent on the basis of recorded or
registered acts, of the application by means of a register letter, return
receipt requested.
Within 60 days from the date of the receipt of the registered letter, the
proprietor of the patent and any person holding rights in the patent on the
basis of recorded or registered acts, may oppose the grant of the application
or declare not to accept the amount and terms of payment of the compensation.
Such opposition must be accompanied by the reasons therefor.
(Opposition to an Application for a Compulsory License)
54quinquies. The Central Patent Office shall promptly inform the applicant, by
registered letter, return to receipt requested, of an opposition provided for
under the last paragraph of the preceding Section, and of its grounds.
The applicant must communicate his counter-arguments to the Central Patent
Office within 60 days from the date of receipt of the registered letter.
The license shall be granted or rejected by decree of the Ministry of Industry,
Commerce and Handicrafts.
(Decree of Grant, Contents, Conditions: Possible Revocation)
54sexies The decree granting the license shall establish the duration, the
conditions for the working of the invention, the guarantees and any other term
to which the grant of the license may be subject. The amount of the
compensation and the terms of payment shall, in case of an opposition as
provided for by Section 54quarter be determined in accordance with the Section
50, paragraph 2.
The conditions of the license may be reviewed by decree of the Ministry of
Industry, Commerce and Handicrafts at the request of any of the interested
parties, provided that valid grounds exist therefor.
Section 50, paragraph 3, shall apply to the modification of the compensation.
The license shall be revoked by decree of the Minister of Industry, Commerce
and Handicrafts if the conditions fixed for working the invention are not met
or the license has failed to pay the compensation in the amount and on the
terms prescribed. If the proprietor of the patent for which a compulsory
license was granted, or his successor in title, grants the use of the patent on
more favorable conditions than those fixed in the compulsory license, the same
conditions shall be extended to the compulsory license at the request of the
licensee.
The responsibility to inform all interested parties of any measures adopted
shall lie with the Central Patent Office.
The decrees granting a license, altering the terms of a license, and revoking a
license, as well as the determination and review of the compensation shall be
published in the Patent Bulletin and entered in the Patent Register.
(Lapse of the Patent)
55. The patent shall lapse for failure to pay the annual fees within six moths
from the date on which they are due as provided for in the following Sections.
(Procedure for Lapse)
56. If after termination of the month in which the annual fee was due and of
the succeeding six months referred to in Section 47 and, in general, of the
term within which payment of the fees is required, the annual fee is not paid,
the Central Patent Office shall notify the interested person by registered mail
that the payment of the fee due does not appear to have been effected in time.
Thirty days after the date of such notice, The Central Patent Office shall
enter in the Patent Register the lapse of the patent due to non-payment of the
annual fee and thereafter publish a notice of such lapse in the Patent
Bulletin.
(Appeal Against Lapse)
57. If the proprietor of the patent is in a position to prove that he made the
payment in time, he may, within six months from the publication in the
Bulletin, appeal to the Board of Appeals for the cancellation of the
publication. The Board shall render its decision after hearing the interested
person or his agents, and considering any written arguments which they have
filed.
Both the filing of the appeal and the decree of the decision shall be entered
in the Patent Register and notice thereof shall be published in the Bulletin.
(Presumption of Lapse)
58. After the publication referred to in Section 56 and upon termination of six
months following its date, or after rejection of the appeal, the patent shall
be deemed to have lapsed as of the end of the last year for which the fee was
paid in time.
(Grounds of Nullity of the Patent)
59. A patent shall be null and void if:
(1) the invention is not patentable within the terms of Sections 12, 13, 14,
15, 16 and 17,
(2) the invention is not disclosed in a manner sufficiently clear and complete
for it to be carries out by a person skilled in the art;
(3) the subject matter of the patent extends beyond the content of the
application as originally filed;
(4) the proprietor of the patent was not entitled to obtain the patent and the
inventor has failed to exercise the rights provided for in Section 27bis.
If the aforesaid grounds of nullity affect the patent only partially, the
decision declaring such partial nullity shall involve a corresponding
limitation of the patent.
A patent which is null and void may have the effects of a different patent
whose conditions of validity it fulfils and which the applicant would have
wished to obtain if he had been aware of its nullity. The decision stating the
conditions of validity for the different patent shall provide for the
conservation of the patent which is null and void.
If the conservation entails an extension of the original duration of the patent
which is null and void, the licensee and the persons who, with a view to the
forthcoming expiry had made seriously and effective investments in order to use
the subject matter of the paten, shall have the rights to obtain, free of
charge, a non-exclusive compulsory license for the extended duration.
(Effects of a Declaration of Nullity)
59bis Decisions pronouncing the nullity of a patent shall be retroactive, but
shall not affect/ (a) any acts already performed enforcing any decision on
infringement which has acquired the authority of a final decision; (b) any
contracts concerning the invention which were concluded prior to the date on
which the decision.
However, in such case, repayment to an extent justified by the circumstances,
of sums paid under the relevant contract, may be granted by the court on the
grounds of equity.
(Effects of the Surrender of the Patent)
59ter The proprietor of the patent may surrender his patent by means of an
instrument received by the Central Patent Office for entry in the Patent
Register.
If, in respect of the patent, acts or decisions are recorded which establish or
ascertain third-party in rem rights inherent in the patent, or the institution
of legal proceedings is recorded in which the establishment or acknowledgement
of such rights is claimed, the surrender shall be effective only if it is
accompanied by the written agreements of such third parties.
(Limitation of the Patent)
59quarter The patent may be limited at the request of the proprietor who shall
attach an amended specification and drawings to his request.
If the Central Patent Office grants the request, the petitioner shall again pay
the fee provided for under Section 44 (3), if the patent originally granted has
already been printed.
The petition for limitation of a patent cannot be granted if a legal action for
nullity of the patent is pending, and for as long as a decision on such action
has not become final. Nor can it be granted if the persons referred to in
Section 59ter , paragraph 2, have failed to give their consent.
The Central Patent Office shall publish a notice of the limitation of patents
in the Patent Bulletin.
TITLE VI
Expropriation
(Military and Public Interest)
60. Patent rights, inclusive of rights deriving from pending applications, may
be expropriated by the State in the interest of the military defense of the
country or for other reasons of public interest.
Expropriation may be limited to the right to use the invention for the need of
the country.
When expropriation takes place in the interest of the military defense and
concerns patents owned by Italian citizens, it shall transfer to the
expropriation administration also the right to apply for patents in foreign
countries, unless the administration surrenders or limits this right.
(Expropriation Decree)
61. Expropriation shall be carried out by decree of the President of the
Republic, upon the proposal of the competent Minister, with the agreement of
the Ministry of Industry, Commerce and Handicrafts and the Minister of Finance,
and, of the measure concerns the military defense of this country, after
consultation with the Council of Ministers or, in all other cases, with the
Board of Appeals.
If the decree ordering expropriation in the interest of the military defense of
the country is issued prior to the printing provided for in Section 38, it may
impose secrecy regarding the subject matter of the invention and fix the
duration of this obligation.
Any violation of secrecy shall be penalized as provided for in Section 262 of
the Penal Code.
(Compensation for Expropriation)
62. The decree ordering expropriation for the reasons of public interest shall
also determine the compensation to which the proprietor of the patent shall be
entitled, after consultation with the Board of Appeals; if expropriation is
carried out in the interest of the military defense of the country, the
compensation may, on the contrary, be fixed subsequently.
(Arbitration to Determine Compensation)
63. The compensation for expropriation carried out in the interest of military
defense shall, if not agreed upon by the parties, be fixed by an arbitrator
named by them. If the parties cannot reach an agreement on the arbitrator to be
chosen, the compensation shall be fixed by a board of arbitration consisting of
three members, one chosen by the person whose patent rights are being
expropriated, one by the Ministry which proposed the expropriation and the
third, who shall function as chairman, by the other two arbitrators or, in case
of disagreement, by the Ministry of Industry, Commerce and Handicrafts. The
arbitrators, except the arbitrator named by the expropriating administrative
department, shall be selected from among those persons figuring in the
professional registers. The rules governing the arbitration procedure and
payment of the costs shall be fixed by regulation.
(Award/ Deposit; Delay and Equitable Indemnity)
64. The award shall be deposited with the Ministry of Industry, Commerce and
Handicrafts within three months from the date of the arbitrator's acceptance of
his nomination, or the formation of the board of arbitration. A single
extension of not more than three months shall be allowed. The award shall be
kept secret if se requested by the expropriating Ministry, and no appeal may be
taken from it. At the request of an interested person, the Ministry of
Industry, Commerce and Handicrafts shall issue a certificate of deposit of the
award stating the amount to be paid and the name of the payees.
An equitable indemnity shall be paid to the inventor able to prove loss
priority rights abroad due to the Ministry's delay in the deciding against the
expropriation, after compliance with the provisions of this and the preceding
Sections.
(Appeal against Expropriation; Exclusion; Notations)
65. Appeals may be taken to the Council of State from the expropriation decrees
based in reasons of public interest, except in controversies involving the
amount of compensation, which shall come within the competence of the judicial
authority.
No appeal may be taken, however, from expropriation ordered in the interest of
military defense.
The Patent Office shall enter notations of all expropriation decrees in the
Patent Register.
Title VII
Recordings
(List of Acts to be Recorded)
66. The following documents shall made public by means of being recorded in the
Central Patent Office:
(1) inter vivos deeds, with or without consideration, which cover assignments,
in whole or in part, of rights in Italian patents on industrial inventions;
(2) inter vivos deeds, with or without consideration, which establish, modify
or transfer rights of enjoyment, in personam or in rem, or rights of security
established in the aforesaid patents in accordance with Section 69 hereof;
(3) deeds of division, corporate documents, settlements and surrenders,
relative to the rights referred to at the two preceding numerals;
(4) bills of attachment;
(5) official reports an awards following forced sales;
(6) official reports on suspensions of sales of portions of attached patens which
are to be returned to the debtor in accordance with the Code of Civil
Procedure;
(7) expropriation decrees based on the public interest;
(8) court decisions which declare the existence of the documents listed under
(1), (2), and (3), when such deeds have not been recorded already.
All court decisions pronouncing the nullity , invalidation, termination,
rescission, or revocation of a recorded document shall be entered in the margin
of the record of the document to which such decisions refer.
Petitions addressed to the court in order to obtain the decisions provided for
in this Section may also be recorded. In this case the recording of the
decision shall take effect from the date on which the petition was recorded:
(9) last wills and testaments and any documents which prove legitimate
succession as well as court decisions relative thereto;
(10) the court decisions referred in Section 27bis and any petitions filed in
court in connection therewith;
(11) the decisions referred to in Section 59, third paragraph, and the relevant
demands filed with the courts.
(Recording Procedure; Refusal; Appeals)
67. Recordings shall be subject to payment of the prescribed fee.
To obtain a recording, the person requesting it shall file an application
accompanied by an authenticated copy of the public document or by the original
or an authenticated copy of the authenticated private document. Where the
authentication is not possible, the Central Patent Office may authorize the
recording of an unauthenticated private document.
After examining the formal regularity of the documents, the Central Patent
Office shall promptly proceed with the recording under the date on which the
application was filed.
If the Central Patent Office rejects the application, the applicant may, within
30 days, appeal to the Board of Appeals, which shall decide the matter in fully
substantiated decision after hearing the applicant, or his agent, and taking
into account any written arguments which may have been submitted.
Recordings shall be effected in the chronological order in which applications
are filed.
Omissions or inaccuracies shall not affect the validity of a recording,
provided that they do not create total uncertainty about the document to be
recorded, or about the patent referred to in it.
(Effects of Recording)
68. The documents and court decisions referred to in Section 66, except last
wills and testaments and the documents and court decisions referred to under
items (4), (9) and (10), shall, as long as they have not been recorded, not be
effective against third parties who have in any way acquired and lawfully
maintained the rights in the patent.
Where several persons acquire the same right from the same patentee, the person
who first recorded his title of acquisition shall enjoy priority.
Recordings of bills of attachment shall, as long as the attachment is in force,
suspend the effects of later recordings of the aforesaid documents and court
decisions; the effects of such recordings shall become void after the last
award has been recorded, provided that such recordings take place within three
months from the date of the award.
Last wills and testaments and the documents which prove legitimate succession
as well as the court decisions relative thereto shall be recorded only in order
to ensure the continuity of transfers.
(Rights of Security in Patents; Cancellation of Recording)
69. Rights of security in patents for industrial inventions must be established
through cash credits. Any amounts of such credit not expressed in Italian
currency shall, at the time of recording, be converted into the equivalent
amount in Lire.
Where more than one right of security exists, their rank shall be determined by
the order in which such rights are recorded.
Recordings of rights of security shall be cancelled upon filing the deed of
consent issued by the creditor, whose signature must be authenticated, or when
the cancellation was ordered in a court decision which has become final, or
after satisfaction of the rights of security as provided for by Section 87 hereof.
TITLE VIII
Administrative and Jurisdictional Provisions
(Competence or the Central Patent Office: Organization and Operation)
70. The services concerned with the matters regulated by this decree shall be
rendered by the Central Patent Office for Inventions, Models and Trademarks at
the Ministry of Industry, Commerce and Handicrafts.
The rules concerning the organization and operation of the Central Patent
Office shall be issued by Decrees of the President of the Republic upon
proposal by the Ministry of Industry, Commerce and Handicrafts with the
agreement of the Ministry of Finance as provided for ion Section 1 of Law No.
100 of January 31, 1926.
(Board of Appeals; Composition)
71. Decisions on appeals from acts of the Central Patent Office provided for by
this decree shall be rendered by a Board of Appeals consisting of a Chairman
and four members chosen, after consultation with the Ministry of Justice, among
magistrates with a rank of not less than appellate judge, or from among
professors of law at universities or high government institutions.
The members of the Board of Appeals, and its Chairman, shall be appointed by
decree of the Ministry of Industry, Commerce and Handicrafts for a term of two
years and shall be eligible for reappointment. Experts chosen by the Chairman
among professors at universities or high government institutions may be
attached to the Board of Appeals to examine specific questions submitted to the
board. Such experts shall not be entitled to a deliberative vote.
The Director of the Central Patent Office shall be a member of the Board of
Appeals, but shall not be entitled to a deliberative vote.
The Board of Appeals shall also function in an advisory capacity at the
Ministry of Industry, Commerce and Handicrafts on questions concerning patents
of invention.
The compensation of the members and of the Secretary of the Board referred to
in the first paragraph shall be determined every two years by decree of the
Ministry of Industry, Commerce and Handicrafts in consultation with the
Ministry of Finance.
(Functioning of the Board of Appeals)
72. In its decisions and orders, the Board of Appeals shall comply with the
provisions of the Code of Civil Procedure regarding pronouncements and forms of
decisions and orders, insofar as such provisions are applicable.
The procedural rules to be followed by the Board of Appeals shall be
established in the regulations implementing the present decree.
(Appeal Fee)
73. Appeals shall be filed together with proof of payment of the prescribed
fees : the fee shall not be refunded if the appeal is denied.
(Nature of Actions Involving Patents)
74. Legal actions involving patents for industrial inventions shall have the
nature of actions concerning commercial property.
(Competence of the Judicial Authority)
75. Legal actions involving industrial inventions shall be instituted before
the judicial authority of the State, regardless of the nationality, domicile or
residence of the parties.
Such actions shall be instituted before the judicial authority of the
defendant's domicile; if the defendant has no residence, address or elected
domicile in the territory of the State, such actions shall be instituted before
the judicial authority of the plaintiff's place of domicile or residence; if
neither the plaintiff nor the defendant has a real or elected domicile in the
territory of the State, the judicial authority of Rome shall have jurisdiction.
To determine jurisdiction, and for the service of administrative or judicial
notice, the domicile recorded in the Patent Register shall be considered as the
elected domicile.
76. If legal actions are based on facts presumed to infringe the right of the
plaintiff, they may be brought also before the judicial authority within whose
jurisdiction the facts have been committed.
(Burden of the <proof in the Case of Nullity or Forfeiture)
77. The burden of proving the nullity or forfeiture of a patent for an
industrial invention shall rest in every case upon the person impugning the
patent.
(Competence of the Public Prosecutor)
78. Actions aimed at obtaining a declaration of nullity or forfeiture of a
patent for an industrial invention may also be instituted ex officio by the
Public Prosecutor.
The action referred to in the preceding paragraph shall be taken against all
persons entered in the Patent Register as owning rights in the patent.
(Effect of Judicial Decisions and Recording)
79. The nullity or forfeiture of a patent, even if only partial, shall be
effective towards any third party when it has been declared in a court
decision, which has become final.
The Central Patent Office shall enter such decisions in the Patent Register.
(Communications to the Central Patent Office; Brief Introducing an Action)
80. Any person who institutes a civil action involving a patent for an
industrial invention must give notice thereof to the Central Patent Office by
sending a copy of the brief introducing such action.
In case of non-compliance with the aforesaid provision, the judicial authority
shall, at any stage of the proceeding, and before deciding the issue of the
case, order such notice to be given.
The clerk of the court shall transmit to the Central Patent Office copies of
all decisions which declare the nullity or forfeiture of patents.
(Description or Seizure of Counterfeited Articles)
81. The owner of patent rights for industrial inventions may apply to the
president of the court or to the magistrate (Pretore) to request the same to
order the description or seizure of any articles produced in violation of his
rights and of the means employed in the production of such articles.
The judicial authority, after summarily investigating the matter and, where
advisable, hearing the person against whom the action was taken; shall
immediately adopt necessary measures and may subject the seizure to the deposit
of a bond.
The description and the seizure shall be carried out by an officer of the
court, with the assistance, where needed, of one or several experts, and with
the help of whatever photographic or other technical means may be required for
the investigation. The interested persons, or their representatives, may be
authorized to attend the operations or to be assisted by technicians of their
choice.
The description may also concern articles owned by third parties, provided that
they are not intended for personal use. The same shall apply to seizure,
provided they do business in the said articles.
(Notifications; Acts; Loss of Effect; Entitlement to Damage)
82. Unless otherwise provided for, for purposes of criminal law, any
description and seizure not ordered in the course of a legal proceeding shall
loose effect if, within eight days of its performance:
(a) no copy of the request for the description or seizure and of the decree
ordering it has been served on the persons against whom the decree was issued;
(b) no legal action regarding the merits of the case has been instituted;
(c) the persons against whom the decree was issued have not been summoned to
the proceeding on the merits of the case and for validation of the seizure.
If under the preceding paragraph a description or seizure has lost its effect
or was recognized as groundless and has been revoked, the person against whom
such description or seizure was ordered shall be entitled to damages from the
person who obtained the description or seizure if such person acted in
negligence.
(Injunction Against Manufacture or Use)
83. In the course of a legal action concerning the violation of patent rights
for an industrial invention, an injunction may; at the request of the
interested party, be issued against manufacture or use the subject matter of
the patent by a provisionally enforceable order, with or without security,
until the decision to be rendered becomes final.
The injunction order may be revoked in the decision on the merits of the case.
(Request of Seizure)
83bis The applicant for a patent may file a request for the measures referred
to in Section 81 and 83 as soon as his application has become accessible to
third parties, or against parties who have notified of the application as
provided for in Section 4.
(Prohibition of Seizure)
84. As an exception to the provisions contained in the preceding sections, and
without prejudice to the requirements of criminal law, no seizure may be
performed of articles suspected of infringing a paten which appear within
enclosures of an official or officially recognized exhibition held in the
territory of Italy, or are intransit to or from such exhibition. It shall be
possible, however, to obtain a description of such articles.
(Publication of Decision; Assignment of Seized Artless)
85. The judicial authority may order that the court decision concerning an
infringement of patent rights, in whole or in summary form, or the decree of
such decision, be published in one or several newspapers named by it, at the
expense of the losing party.
The decision establishing the infringement of patent rights may order that the
articles manufactured, imported or sold in violation of said rights, and the
specific means used in their manufacture or in carrying out the patented method
or process, be awarded to the owner of the patent, without prejudice to the
latter's right to compensation for damages.
The judge also, at the request of the proprietor of the articles or means of
production referred to in the preceding paragraph, and considering the
remaining terms of the patent or the particular circumstances of the case,
order to seizure of the articles and means of production up to the date of
expiration of the patent, at the expense of the perpetrator of the violation.
In this last case, the patentee may request that the seized articles be
assigned to him at a price which, if no agreement can be reached by the
parties, shall be fixed in accordance with the last paragraph of the following
Section, with the advice of an expert, if necessary.
(Payment of Damages; Removal or Destruction of Articles)
86. The decision ordering payment of damages may, at the request of one of the
parties, provide for a lump sum payment to be based on the records of the case
and on the assumptions deriving therefrom. It may also fix an amount due for
each violation, or each case of non-compliance that may be found in the future,
and for any delay in the execution of the orders contained in the decision.
Articles which constitute an infringement of rights in a patent for an
industrial invention may not be ordered to be removed or destroyed, nor may
their use be prohibited, if they belong to a person who is using them in good
faith for personal or domestic purposes.
Any controversies arising out of the enforcement of the measures described in
this and in the preceding sections shall, after hearing the parties and
summarily investigating the matter, be decided by the president of the court,
or the magistrate who issued the decision providing for such measures, in an
order from which no appeal may be taken.
(Forced Execution of Patrimonial Rights in the Patent)
87. Patrimonial rights in patents for industrial inventions may be subject to
forced execution.
The rules on executions on personal property laid down in the Code of Civil
Procedure shall be applicable to such executions.
The regulations implementing this decree may establish special rules for such
executions and may also lay down the terms and conditions for the satisfaction
of rights of security in patents and the extinction of such security.
(Sanctions for Fraudulent Acts)
88. Any person who, without using deceptive means of authentication,
certification or recognition, fraudulently and in violation of a valid patent
for an industrial invention manufactures, sells, exhibits, uses industrially,
or introduces into the country articles covered by the said patent shall, upon
a complaint by the interested party, be penalized with a fine of up to Lire
4000,000.
89. Any person who affixes to an article untruthful words or statements
intended to create the impression that the article so marked is protected by a
patent shall be penalized with a fine of from Lire 20,000 to Lire 200,000.
(Non-Observation of Time Limits; All Due Care Requirement; Appeals)
90. The applicant for or the proprietor of a patent who, despite all due care
required having been taken, was unable to observe a time limit vis-à-vis the
Central Patent Office or the Board of Appeals shall have his rights re-established
if the non-observance in question has the direct consequence of causing the
refusal of the patent application or of a request relative thereto or the lapse
of the patent or the loss of any other right or means of appeal.
The omitted act must be complete and the application for re-establishment must
be filed within two months from the removal of the cause of non-compliance,
stating the facts and grounds on which the application is based and submitting
the suitable documentation. The application shall only be admissible within the
year following the expiry of the unobserved time limit. In the case of
non-payment of an annual fee, this one-year period shall run as of the date of
expiration of the due date provided for by the Section 47 for payment of the
annuity without imposition of the additional fee.
In case of failure to pay a fee for maintenance of a patent, a certificate must
also be attached proving payment of the fee due, inclusive of the additional
fee provided for by Section 47.
Where the Central Patent Office rejects an application for re-establishment, an
appeal from its decision may be taken to the Board of Appeals within 30 days
from the date of the notice to the rejection. The Board of Appeals shall be
competent to decide on the applications for re-establishment of the right to
take an appeal.
The provisions of this Section shall not be applicable: to the time limits
indicated in the preceding paragraph of this Section, to the time limit within
which priority rights may be claimed, to the time limits the observance of
which is a prerequisite for applicability of Section 4, paragraph 3, of Decree
of the President of the Republic No. 540 of June 30, 1972, to the time limit
granted in accordance with Section 29 for the division of patent applications
and the filing of a divisional application.
(Serious and Effective Preparations for Using the Invention)
90bis Any person who has made serious and effective preparations for using an
invention or has begun using it in the course of the period between the loss of
the exclusive rights or of the right to acquire exclusivity and the
re-establishment provided for under the preceding Section 90 may without
payment carry out the invention within the limits of his prior use or those
resulting from the preparations.
TITLE IX
General and Transitional Provisions
Chapter I: General Provisions
(Use of the Italian Language)
91. All applications provided for by this decree shall be addressed to the
Central Patent Office.
Applications, and the documents attached to them, must be written in Italian.
Any documents written in a language other than Italian must be accompanied by
an Italian translation.
92. (repealed)
93. The applicant, or his representative, if any, shall in each application
indicate or elect an Italian domicile for any communications or notices to be
sent to him under this decree.
The Central Patent Office shall be informed of any change sin domicile, which
shall be recorded in the Patent Register.
When no Italian domicile has been indicated or elected, or if the Central
Patent Office is informed of the discontinuance of the domicile elected in
accordance with the preceding paragraphs, communications and notices shall, for
as long as the Central Patent Office has not been informed of the election of a
new Italian domicile, be effected by posting a copy of the document or notice
of its contents on the bulletin board or the Central Patent Office.
The Central Patent Office shall also be notified of changes in the name of the
patentee, which shall be entered in the Patent Register; such notice shall be
accompanied by documents proving the changes.
(Right to Appoint a Representative; Power of Attorney)
94. No person shall be compelled to be represented by a professional
representative in proceedings before the Central Patent Office; natural or
legal persons may be represented by an employee who need not be a professional
representative.
If the appointment of one or several representatives has not been made in a
separate, authentic or authenticated act, it may be made in a special power of
attorney subject to payment of the prescribed fee.
The power conferred by the power of attorney shall be valid only for the
subject matter specified in it and shall be limited to relations with the
Central Patent Office.
The power may be conferred only on representatives whose names appear on a list
maintained for this purpose by the Central Patent Office.
The power may also be conferred upon a lawyer or an attorney-at-law whose name
appears in the respective professional roll.
(Non-Acceptance of an Application for Lack of Payment of the Fee)
95. Applications aimed at obtaining a measure for which payment of a fee is
prescribed shall be admitted only if they are accompanied by a document proving
the payment of such fee.
Payments may also be made by persons other than the owner of the patent.
The amount of the prescribed fees is indicated ion Table A annexed to this
decree. Acts and documents subject to the payment of tax stamps, other than
those provided for in Law No. 3268, of December 30, 1923, and the amendments
thereto, are indicated in the annexed Table B.
(Availability to the Public of Registers of Patent Applications and Patents)
96. The Register of Patent Applications, the Register of Patents, the
applications and any documents pertaining to them shall be open to pubic
inspection.
Without prejudice to the provisions contained in Sections 38, 40 and 61 hereof,
any person shall have the right to inspect the registrations, recordings and
entries contained in the Registers and to obtain certified copies or abstracts
thereof, as well as copies of the applications and documents relating thereto.
Certified copies or extracts, as well as authentications of copies of acts and
documents, shall be subject to payment of the prescribed fees.
(Publication)
97. All publications provided for by this decree shall appear in the Bulletin
of Patents, edited by the Central Patent Office.
Chapter II: Transitional Provisions of Decree of the President of the Republic
No. 338 of June 22, 1979
(Applicability of the Present Law: Patent Applications and Requests for
Recording Filed before Entry into Force; Exceptions; Right of Priority)
98 (Section 81 6 ) Applications of patents for industrial inventions and
applications for recordings of any document relative thereto shall, even if
they were filed prior to the entry into force of this decree, be processed in
accordance with the provisions contained herein, except for their formal
regularity and the designation of the inventor, which shall be subject to the
previous provisions.
The priority rights referred to in repealed Sections 9 and 17 of Royal Decree
No. 1127 of June 29, 1939, shall be maintained, provided that the disclosure
has taken place prior to the entry into force of the present decree.
(Applications for Patents of Addition and Patents of Addition Still in Force)
99. (Section 82) Applications for patents of addition and patents of addition
which are still valid shall be subject to the ordinary provisions; Section
98(81) hereof shall be applicable thereto. The annual fees shall be paid which
shall become due after expiration of the term of one year after the entry into
force of the present decree.
(Applicability of Former Law; Grounds and Declarations of Nullity for Granted Patents
of inventions)
100. (Section 83) Patents for industrial inventions already issued at the time
of entry into force of this decree shall, with regard to the causes of nullity,
be subject to the rules of the previous Law and, with regard to the effects of
the declaration of nullity, to the provisions contained in Section 59 bis of
Royal Decree No. 1127 of June 29, 1939.
(Non-Expired Patents for Invention; Exceptions)
101. (Section 84) Section 4, last paragraph, of Royal Decree No. 1127 of June
29, 1939, shall apply to patents for industrial inventions which have not
expired by the date of entry into force of the present decree. However,
licensees and any persons who, in view of the approaching expiration of such a
patent, made serious and effective investments in order to use the invention
shall be entitled to obtain a non-exclusive royalty-free license for the
remaining period of duration of the patent. This right shall not apply
infringers of patents not yet expired.
(Regulations)
102. (Section 85) Regulations to be issued within one year from the entry into
force of this decree by the Minister of Industry, Commerce and Handicrafts,
with the agreement of the Minister of Justice, shall lay down the rules
relative to the formation of the list of the professional representatives, the
exercise of the disciplinary powers and any other aspect of their professional
activity.
Pending the formation of the list of professional representatives, a power of
attorney may be conferred upon any person.
(Amendments to Ministerial Decree of February 22, 1973)
103. (Section 86) Within six months from the entry into force of this decree,
the Minister of Industry, Commerce and Handicrafts shall issue a decree
providing for the amendments to be made to the Ministrial Decree of February
22, 1973, concerning the implementing regulations to Decree of the President of
the Republic No; 540 of June 30, 1972 .