Are there any restrictions on the establishment of a business entity by a foreign licensor or a joint venture involving a foreign licensor and are there any restrictions against a foreign licensor entering into a licence agreement without establishing a subsidiary or branch office? Whether or not any such restrictions exist, is there any filing or regulatory review process required before a foreign licensor can establish a business entity or joint venture in your jurisdiction?
According to article 16 of the Civil Code’s preliminary provisions, subject to the provisions contained in special laws, foreigners enjoy the civil rights attributed to citizens on condition of reciprocity. Furthermore, with specific reference to intellectual property rights, article 3 of Legislative Decree No. 30/2005 (the Industrial Property Code) states, as a general provision, that a citizen of a state that is part of the Paris Convention of 1967 for the Protection of Industrial Property or of the World Trade Organization, or even of the 1991 International Convention for the Protection of New Plants Varieties of 1991, or a citizen of a state that is not part of the above conventions but who has a domicile or a permanent industrial or business factory on the territory of a state that is part of the Paris Convention, will receive the same treatment granted to Italian citizens.
Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through – Licensing 2013, (published in February, 2013; contributing editor: Bruno Floriani of Lapointe Rosenstein Marchand Melancon LLP). For further information please visit www.GettingTheDealThrough.com.