Several general principles are important for effective protection of intellectual property (IP) rights in Italy. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in Italy than in the United States. Third, rights must be registered and enforced in Italy under local laws. For example, your U.S. trademark registrations, design or utility patent titles will not protect you in Italy without further administrative procedures at the corresponding regional (EU) or local level.
Most copyrighted works created in the United States will be automatically protected in Italy from the moment of creation or publication according to international agreements. However, the extension of protection will vary according to the laws of Italy and the EU. Protection against unauthorized use varies depending on the national laws of each country.
Obtaining a utility patent in member states of the EU is based on a first-to-file system; the first person or entity to register the patent becomes the title holder. Likewise, most trademark and design rights—similar to a design patent— are based on a first-to-file registration system. Therefore, you should consider how to obtain patent, design, or trademark protection before introducing your products or services in the Italian market. Better yet, you should consider having an IP strategy for the whole world before entering foreign markets, to ensure that you do not lose the possibility to obtain IP protection outside the United States.
Trademark and design titles can be obtained for the whole of the EU at the EU Intellectual Property Office. Individual titles for Italy can also be obtained at the corresponding IP office. Similarly, a bundle of patent titles can be obtained for various countries through a simplified process at the European Patent Office; an individual patent title can be directly obtained from the patent office in Italy. A system to obtain and enforce a single patent with uniform protection and equal effect in several EU member states, consisting of the Unitary Patent and the Unified Patent Court, is in place since June 2023. There are also other international registration systems such as the Patent Cooperation Treaty for patents or the Madrid Protocol for trademarks, which could help protect your IP in many countries of the world, including Italy.
It is vital that companies understand that IP rights are primarily private rights and that the U.S. Government cannot enforce them for private individuals in Italy. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local legal counsel or IP consultants who are experts in Italian and EU law. The U.S. Commercial Service can provide a list of local lawyers upon request.
While the U.S. Government stands ready to assist, there is little that can be done if the rights holders have not taken the fundamental steps necessary to secure and enforce their IP in a timely fashion. Rights holders who delay enforcement of their rights may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should U.S. Government advice be regarded as a substitute for the responsibility of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully whether to permit your partner to register IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins and the incentive of would-be bad-faith actors. Projects and sales in Italy require constant attention. Work with legal counsel familiar with Italian law to create a solid contract that includes non-compete clauses and confidentiality/non-disclosure provisions.
It is also recommended that SMEs understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are several of these organizations, in both the EU and the United States, including the American Chambers of Commerce in Italy. For more information on the protection and enforcement of property rights in Italy, please see the Department of State’s Investment Climate Statement.
IP Resources
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources on IP for companies include the following:
For information about patent, trademark, or copyright issues, including enforcement issues in the United States and other countries, contact the “STOP! Hotline” at (866) 999-HALT or visit the Stop Fakes website maintained by the U.S. Patent and Trademark Office.
For more information about registering trademarks or obtaining designs or utility patents (both in the United States as well as in foreign countries), contact the U.S. Patent and Trademark Office at (800) 786-9199. For more information about registering copyrighted works in the United States, contact the U.S. Copyright Office at (202) 707-5959.
For more information about how to evaluate, protect, and enforce IP rights and how these rights may be important for businesses, please visit the resources section of the STOP Fakes website. For information on obtaining and enforcing IP rights and market-specific IP toolkits, consult the STOP Fakes IPR Toolkits. The toolkits contain detailed information on protecting and enforcing IP rights in specific markets, as well as contact information of IP offices abroad and government officials available to assist SMEs. For more information, please see the webpage on Protecting Intellectual Property.
The Office of the United States Trade Representative (USTR) publishes the Special 301 Report on an annual basis. This report provides a review of IP protection and enforcement for U.S. trading partners around the world. In the 2023 edition of the Report, USTR highlights the negative market access implications for U.S. producers due to the EU’s initiatives to protect geographical indications in Europe and third-country markets.
The U.S. Department of Commerce has positioned IP attachés in key markets around the world, including an attaché at the U.S. Mission to the European Union who covers Italy.
IP in Italy
IP Office: Ufficio Italiano Brevetti e Marchi
Copyright Office: SIAE Societa’ Italiana degli Autori ed Editori
Copyright Office: MIC Direzione Generale Biblioteche e Diritto D’Autore
https://www.librari.beniculturali.it/opencms/it/
IP law database: WIPO IP law database Italy
IP in the EU and international organizations:
European Union Intellectual Property Office (EUIPO)
Database of laws of the World Intellectual Property Organization (WIPO Lex)