Clifford Chance

Introduction

In the last IP update, we focused on the IP Strategy for 2021-2023 pursued by the Italian government in the context of the Piano Nazionale di Ripresa e Resilienza ("PNRR"). The IP Strategy 2021-2023 is indeed part of the 1st Mission laid down by the PNRR, whose purpose is to "innovate the country and to bring about deep structural changes along the lines of a new digital paradigm".

Since the Italian government intends to execute the 1st Mission of the PNRR via a number of measures, including by reforming the Italian industrial property system, the Italian Ministry of Economic Development launched a public consultation to collect market and professional input that would contribute in determining the IP Strategy 2021-2023. Following completion of the public consultation, the Italian Ministry of Economic Development published the intervention plan for the IP Strategy 2021-2023 (the "Intervention Plan") on 23 June 2021, structured by taking into account the input provided by the stakeholders.

The Intervention Plan addresses the five challenges of the IP Strategy 2021-2023. This paper provides an overview of the measures outlined in the Intervention Plan.

1. Improvement of protection for IP rights

To ensure the effective protection of IP rights, the Intervention Plan intends not only to strengthen the legal instruments which protect them, but also to provide additional measures aimed at promoting and recognising the value of creativity and innovation. In this regard, the reform of the intellectual property law will play a crucial role, by introducing, among others, the following innovations:

• the protection of new kinds of industrial designs, such as augmented reality systems or graphic interfaces; 
• the newly adopted (but not yet effective) procedure on the revocation of trademark rights, which, in addition to the existing objection procedure, will increase the protection of IP rights; 
• simplified and more efficient procedures for the registration of new IP rights and for their consultation. In particular, the Plan provides that (i) the Italian public database will be coordinated with international and European databases of registered IP rights and (ii) the procedures will be highly digitalised, including by implementing artificial intelligence and cloud-based systems; 
• the relationships between AI products and the protection offered by IP rights will be taken into account in order to further improve IP laws.

2. Promoting access to IP rights

The Intervention Plan aims at spreading knowledge about the value of IP rights. In this regard, the Italian Ministry of Economic Development intends to take a twopronged approach. On the one hand, small and medium-sized companies will be involved in spreading such knowledge and, on the other, the Intervention Plan would ensure that the values of those intangible assets entered in companies' financial accounts mirror the effective value of the IP rights owned by the company itself. Accordingly, the Ministry will define the criteria to evaluate the intangible assets, including the IP rights, from a quantitative and qualitative perspective. The purpose is to enable the companies to (i) include the IP rights in financial statements and (ii) use their intangible assets as a security for the loans granted by banks.

Moreover, the Intervention Plan intends to foster the evaluation of the public research and its potential benefits for the Italian productive sector, with, among others, two interventions. Firstly, contrary to what Italian IP laws currently provide for, the research institutes (and not the researchers) will acquire ownership of the IP rights for the inventions developed. Secondly, the inventions will be available for the companies subject to reasonable terms and will be published on a public database (i.e. the Knowledge Share).

3. Improving access to patents

The 3rd challenge of the IP Strategy 2021-2023 aims to recognise the economic value of the intangible assets and to implement the value of sharing information and knowhow. Therefore, in line with the European Commission's input, the Italian government will assess the suitability of new procedures to license IP rights to third parties even without the consent of the legitimate owner. This would be particularly useful in responding to a crisis, such as a health-related emergency.

Moreover, the 3rd Mission focuses on the SEPs, i.e. Standard Essential Patents. By way of example, 5G technology is a communication standard which relies on several patented technologies, which are essential for the use of the standard. In this context, the Italian government intends to cooperate with the European Commission and create a Working Group dedicated to discussions on the effects of licensing SEPs on internal competitiveness.

Lastly, it is worth highlighting that the IP Strategy 2021-2023 pursues the objective of spreading knowledge about registered IP rights in Italy. The Italian Patent and Trademark Office will publish reports which include, among others, applications for licensing submitted in the technological field.

4. Ensuring effective protection for IP rights

The Ministry intends to combat counterfeiting, piracy and black market activities by (i) revising the relevant provisions to grant more effective protection, (ii) promoting initiatives to inform consumers on the disruptive effects caused by counterfeiting and patent infringement and (iii) supporting small and medium-sized enterprises in the fight against counterfeiting, piracy and black market activities.

5. Strengthening the role of Italy in an international context

The IP Strategy 2021-2023 intends to strengthen the role of Italy in the international IP community. In particular, the Italian government will provide the European institutions with its input, developed taking into account the positions of Italian stakeholders. The same approach will be followed for Italy's participation in the activities of international organisations.

The Unitary Patent will play a crucial role as it will provide uniform patent protection in up to 25 EU Member States and ensure an IP protection network at the international level.

Conclusion

It seems that, in the next few years, IP rights in general and specifically those related to newly developed technologies will play a central role in the Italian context. In this regard, the IP Strategy 2021-2023 lays the foundations for the recognition of the effective value of the intangible assets owned by companies, which will therefore become increasingly relevant in terms of the evaluation of the overall assets of companies.

Moreover, the Italian Government is sensitive to the need for a system of protection for IP rights that should be fast, efficient and coordinated with the international environment. For this reason, the IP Strategy 2021-2023 will determine a reform of the current IP regulation framework and will provide stakeholders with efficient instruments for obtaining legal protection.

Links

Intervention Plan issued by the Italian Ministry of Economic Development on 23 June 2021