Transfer of IP rights in Italy

According to Italian law a patent may be assigned both by transaction and by law. More specifically, a patent may be assigned by law:

1. within intestate successions; or
2. by way of expropriation. According to Articles 141 and 142 of the Italian Industrial Property Code (hereinafter the “Code”), except for rights on trademarks, industrial property rights, even during the registration or patenting procedure, may be expropriated by the State in the interest of military defence of the Country or for other reasons in the public interest. Expropriation is ordered by a decree of the President of the Republic, on proposal from the relevant Minister, in concert with the Ministries of Productive Activities and of Economy and Finance, upon receiving the opinion of the Council of Ministers, if the measure regards the military defence of the Country, or in other cases, by the Board of Appeal of the Italian Office for Patents and Trademarks (hereinafter “PTO”). The expropriation decree determines the indemnity due to the owner of the industrial property right, based on its market value, upon receiving the opinion of the Board of Appeal.

Under Italian law it is not required to record the assignment in the PTO register, to make it valid and effective between the parties. However, according to Article 139 of the Code, with some exceptions, legal documents and judgements determining the assignment, must be recorded in the PTO register in order to be effective towards third parties which have in any manner purchased and legally preserved rights on the industrial property title.
For the sake of completeness, it must be noted that the right to be recognized as author of the invention is not subject to assignment.

To record a patent assignment, the following documents must be filed:

1. the request of registration which, according to Article 195 of the Code, shall contain the following information: 1) name, surname and domicile of the assignee and of his proxy-holder, if any; 2) name and surname of the assignor; 3) the type of assignment on the basis of which the request of registration is made; 4) the intellectual property right/s subject to assignment; 5) the State where the assignee has citizenship, domicile or a plant or a commercial office. Said request shall be drafted in Italian.
2. a certified copy of the public act or of the private act with authenticated signatures, by means of which the assignment has been performed. In some cases, to facilitate the registration process, the PTO also accepts a mere declaration, signed by the parties, attesting that the patent/s concerned has/have been transferred. Said declaration shall be registered at the Italian Tax Authority;
3. the translation into Italian of any foreign documents, accompanied by a declaration of conformity of the translation to the original;
4. the receipts attesting the payment of taxes;
5. the power of attorney, if a lawyer or a patent attorney has been appointed to act before the PTO on behalf of the rights’ owner.

2.1 Are original supporting documents essential or are copies sufficient?

Scanned copies are usually sufficient;

2.2 Are there any legalization and/or notarization and/or translation requirements?

As specified above, in principle a certified copy of the public act or of the private act with authenticated signatures, by means of which the assignment has been performed, must be filed with the PTO; however, in some cases, to facilitate the registration process, the PTO accepts also a mere declaration, signed by the parties, attesting that the patent/s concerned has/have been transferred. Any document drafted in a foreign language must be accompanied by a translation into Italian;

2.3 Is there a must to use a specific form?

No specific form must be used.

The record in the PTO register has declarative effects. This means that in the absence of the record, the assignment is valid and effective between the parties, but not effective towards third parties which have in any manner purchased and legally preserved rights on the industrial property title.

No, there are not specific formalities.

No, according to Article 201 of the Code, nobody is obliged to be represented by a professional representative in the proceedings before the PTO.
However, if the interested party wishes to appoint a professional representative, the appointment may be granted only to:

1. attorneys registered in a specific register established for that purpose at the Board of the Industrial Property Consultants Institute. Citizens of the European Union who possess a corresponding qualification in another Member State can also be included in such a register;
2. lawyers admitted to the Bar.

The official fees arising from the recording of a patent assignment slightly vary according to the kind of filing chosen (filing with the competent Chamber of Commerce, filing through the mail service or filing through the PTO online system).
The fees related to the online modality, which is currently the most used, are indicated below:

1. EUR 85.00 + EUR 16.00 as stamp duties;
2. EUR 50.00 as fee for each patent assigned;
3. EUR 34 as stamp duty related to PoA (if any).

Patent license agreements can be exclusive or non-exclusive. Furthermore, they can be voluntary or compulsory.
Compulsory licenses can be granted due to lack of implementation or for dependent patent.

Compulsory license due to lack of implementation

According to Article 70, paragraphs 1 and 2, of the Code, a compulsory license due to lack of implementation may be granted if:

1. within three years from the issue of the patent or within four years from the filing of the relevant application if it comes last, the owner of the patent (or his successor in title) has not implemented the patented invention (directly or through licensees) or has implemented it to an extent that is seriously disproportionate to the Country’s needs;
2. the implementation of the invention has been suspended or reduced for more than three years in such a manner to be seriously disproportionate to the country’s needs.

More specifically, the implementation of the invention means either the production in the territory of the Country, or the importation of products manufactured in a state belonging to the EU, to the European Economic Area or to the WTO. 
Furthermore, according to Article 70, paragraph 3, of the Code, the compulsory license is not granted if the lack of or the insufficient implementation is due to causes out of control of the owner of the patent or his successor in title. The same Article 70 specifies, however, that the lack of financial means or the lack of demand in the national market (when the product is marketed abroad) cannot justify the lack of or insufficient implementation.

Compulsory licence in the event of a national health emergency

According to Article 70 bis of the Code, in the event of the declaration of a state of national emergency motivated by health reasons, in order to cope with proven difficulties in the supply of specific medicines or medical devices deemed essential, compulsory licences may be granted, in compliance with international and European obligations, for the non-exclusive, non-saleable use, mainly directed to the supply of the domestic market, of patents relevant for production purposes, having a validity bound to the continuation of the emergency period or up to a maximum of twelve months from the termination of the same.

Compulsory license for dependent patent

According to Article 71 of the Code, a compulsory license for dependent patent may be granted if:

1. the invention protected by the later patent cannot be used without harm to the rights related to the patent granted on a previous application; and
2. the later patent represents important technical progress of considerable economic importance in respect to the object of the previous patent.

The “technical progress” and “economic importance” mentioned in Article 71 are assessed on a discretionary manner by the administrative authority issuing the compulsory license. However, as suggested by the authors, the “economic importance” should consist either in an advantage for the society or in a saving of costs compared to the already known production processes.

License of right

Another kind of license is the so-called “license of right”, regulated by Article 80 of the Code, according to which in the application or also in a request to the PTO, if no exclusive license is recorded, the requesting party or owner of the patent may offer to the public a license for non-exclusive use of the invention. The effects of the license shall start as of notification to the owner of acceptance of the offer, even if the compensation is not accepted. In such a case, the determination of the amount and methods of payment of the compensation shall be made by an arbitration panel.
No form of patent’s licensing must be recorded in the PTO register to become effective. However, in the absence of the record licenses, despite being valid and effective between the parties, are not opposable towards third parties.

To record a patent licence, the following documents must be filed:

1. the request of registration which, according to Article 195 of the Code, shall contain the following information: 1) name, surname and domicile of the licensee and of his proxy-holder, if any; 2) name and surname of the licensor; 3) that the record is based on a licence; 4) the intellectual property right/s subject to licence; 5) the State where the licensee has citizenship, domicile or a plant or a commercial office. Said request shall be drafted in Italian;
2. a certified copy of the public act or of the private act with authenticated signatures, by means of which the licence has been executed. In some cases, to facilitate the registration process, the PTO also accepts a mere declaration, signed by the parties, attesting that the patent/s concerned has/have been licensed. Said declaration shall be registered at the Italian Tax Authority;
3. the translation into Italian of any foreign documents, accompanied by a declaration of conformity of the translation to the original;
4. the receipts attesting the payment of taxes;
5. the power of attorney, if a lawyer or a patent attorney has been appointed to act before the PTO on behalf of the rights’ owner.

8.1 Are original supporting documents essential or are copies sufficient?

scanned copies are usually sufficient;

8.2 Are there any legalization and/or notarization and/or translation requirements?

as specified above, in principle a certified copy of the public act or of the private act with authenticated signatures, by means of which the license has been performed, must be filed with the PTO; however, in some cases, to facilitate the registration process, the PTO accepts also a mere declaration, signed by the parties, attesting that the patent/s concerned has/have been licensed. Any document drafted in a foreign language must be accompanied by a translation into Italian;

8.3 Is there a must to use a specific form?

no specific form must be used.

The record in the PTO register has declarative effects. This means that in the absence of the record, the license is valid and effective between the parties, but not opposable to third parties.

Please refer to answer no. 5 under section “Patents: Assignment”.

Please refer to answer no. 6 under section “Patents: Assignment”.

Yes, it is possible to pledge a patent. 

The record in the PTO register is required.

A trademark may be assigned by transaction. It may also be assigned by law within intestate successions.

Under Italian law, as for patents, it is not required to record the trademark assignment in the PTO register, to make it valid and effective between the parties. However, according to Article 139 of the Code, with some exceptions, legal documents and judgements determining the assignment, must be recorded in the PTO register to be effective towards third parties which have in any manner purchased and legally preserved rights on the industrial property title.

(The formalities to be met are the same provided for patent assignments. Therefore, please refer to answer no. 2 under section “Patents: Assignment”.)

To record a patent assignment, the following documents must be filed:

1. the request of registration which, according to Article 195 of the Code, shall contain the following information: 1) name, surname and domicile of the assignee and of his proxy-holder, if any; 2) name and surname of the assignor; 3) the type of assignment on the basis of which the request of registration is made; 4) the intellectual property right/s subject to assignment; 5) the State where the assignee has citizenship, domicile or a plant or a commercial office. Said request shall be drafted in Italian.
2. a certified copy of the public act or of the private act with authenticated signatures, by means of which the assignment has been performed. In some cases, to facilitate the registration process, the PTO also accepts a mere declaration, signed by the parties, attesting that the patent/s concerned has/have been transferred. Said declaration shall be registered at the Italian Tax Authority;
3. the translation into Italian of any foreign documents, accompanied by a declaration of conformity of the translation to the original;
4. the receipts attesting the payment of taxes;
5. the power of attorney, if a lawyer or a patent attorney has been appointed to act before the PTO on behalf of the rights’ owner.

2.1 Are original supporting documents essential or are copies sufficient? 

Scanned copies are usually sufficient;

2.2 Are there any legalization and/or notarization and/or translation requirements?

As specified above, in principle a certified copy of the public act or of the private act with authenticated signatures, by means of which the assignment has been performed, must be filed with the PTO; however, in some cases, to facilitate the registration process, the PTO accepts also a mere declaration, signed by the parties, attesting that the patent/s concerned has/have been transferred. Any document drafted in a foreign language must be accompanied by a translation into Italian;

2.3 Is there a must to use a specific form?

No specific form must be used.

Please refer to answer no. 3 under section “Patents: Assignment”.

No, there are not specific formalities.

No, there are not specific formalities, except for the need to specify in the application for registration that the trademark is only partially assigned.

Please refer to answer no. 5 under section “Patents: Assignment”.

The official fees arising from the recording of a trademark assignment slightly vary according to the kind of filing chosen (filing with the competent Chamber of Commerce, filing through the mail service or filing through the PTO online system).

The fees related to the online modality, which is currently the most used, are indicated below:

1. EUR 80 as stamp duties;
2. EUR 81 as fee for each trademark assigned;
3. EUR 34 as stamp duty related to PoA (if any).

Trademark licence agreements can be exclusive or non-exclusive.

Furthermore, contrary to patent licence agreements, which can be voluntary or compulsory, trademark licence agreement can be only voluntary.

The formalities to be met are the same provided for patent licences. Therefore, please refer to answer no. 8 under section “Patents: Licensing”.

To record a patent license, the following documents must be filed:

1. the request of registration which, according to Article 195 of the Code, shall contain the following information: 1) name, surname and domicile of the licensee and of his proxy-holder, if any; 2) name and surname of the licensor; 3) that the record is based on a licence; 4) the intellectual property right/s subject to license; 5) the State where the licensee has citizenship, domicile or a plant or a commercial office. Said request shall be drafted in Italian;
2. a certified copy of the public act or of the private act with authenticated signatures, by means of which the license has been executed. In some cases, to facilitate the registration process, the PTO also accepts a mere declaration, signed by the parties, attesting that the patent/s concerned has/have been licensed. Said declaration shall be registered at the Italian Tax Authority;
3. the translation into Italian of any foreign documents, accompanied by a declaration of conformity of the translation to the original;
4. the receipts attesting the payment of taxes;
5. the power of attorney, if a lawyer or a patent attorney has been appointed to act before the PTO on behalf of the rights’ owner.

9.1 Are original supporting documents essential or are copies sufficient? 

scanned copies are usually sufficient;

9.2 Are there any legalization and/or notarization and/or translation requirements?

as specified above, in principle a certified copy of the public act or of the private act with authenticated signatures, by means of which the license has been performed, must be filed with the PTO; however, in some cases, to facilitate the registration process, the PTO accepts also a mere declaration, signed by the parties, attesting that the patent/s concerned has/have been licensed. Any document drafted in a foreign language must be accompanied by a translation into Italian;

9.3 Is there a must to use a specific form?

no specific form must be used.

Please refer to answer no. 9 under section “Patents: Licensing”.

No, there are not specific formalities except for the need to specify in the application for registration that the trademark is only partially licensed.

Please refer to answer no. 5 under section “Patents: Assignment”.

Please refer to answer no. 7 under section “Trademarks: Assignment”.

Yes, it is possible to pledge a trademark.

The record in the PTO register is required.