Legislative Decree, February 10, 2005, No 30
Amended by Legislative Decree, March 16, 2006, No 140

Chapter I
GENERAL PROVISIONS AND FUNDAMENTAL PRINCIPLES
Art.1
Industrial property rights
1. For the purposes of this code, the words industrial property shall include trademarks and other distinctive signs, geographical indications, designations of origin, designs and models, inventions, utility models, topographies of semiconductor products, business confidential information and new plant varieties.

Art.2
Constitution and acquisition of rights
1. Industrial property rights are acquired by obtaining a patent, through registration or through the other means provided for in this code. The obtaining of a patent and registration give rise to industrial property titles.
2. Inventions, utility models, and new plant varieties are the object of a patent.
3. Trademarks, designs and models, and topographies of semiconductor products are the object of registration.
4. Distinctive signs other than registered trademarks, corporate confidential information, geographical indications and designations of origin are protected, when the requirements of law are met.
5. The administrative activity for obtaining a patent and to the aim of registration has the nature of a constitutive ascertainment and gives rise to titles subject to a special regime of invalidity and revocation based on the provisions set forth in this Code.


Art.3
Treatment of a foreigner
1. The nationals of each Country party to the Paris Convention for the Protection of Industrial Property, Stockholm text, of July 14, 1967, ratified through Law No. 424 of April 28, 1976, or to the World Trade Organization, and the nationals of Countries not parties to the mentioned Conventions, who are domiciled or have real and effective industrial or commercial enterprises in the territory of one of the Countries party to the Paris Union Convention for the protection of industrial property, shall be treated, as to the matters regulated by this code, as Italian nationals. As to new plant varieties, the treatment applied to Italian nationals is also applied to nationals of a Country party to the International Convention for Protection of New Plant Varieties UPOV, Geneva text of March 19, 1991, ratified by Law No. 110 of March 23, 1998. As to topographies of semiconductor products, the treatment applied to Italian nationals is only applied to nationals of another Country if the protection applied by such Country to Italian nationals is analogous to that provided for in this code.
2. The nationals of Countries not party either to the Paris Union Convention for the Protection of Industrial Property, or to the World Trade Organization, or, as concerns new plant varieties, to the International Convention for the Protection of New Plant Varieties, shall be treated, as to the matters regulated by this Code, as Italian nationals, if the Country to which the national pertains grants reciprocity of treatment to Italian nationals.
3. All benefits that international conventions signed and ratified by Italy recognize to foreigners in the territory of the Country, as to the matters dealt with by this code, are automatically extended to Italian nationals.
4. The right to obtain, pursuant to international conventions, the registration in Italy of a trademark previously registered abroad, mention of which is made in the registration application, is acknowledged to the holder of the foreign trademark, or to its successor in title.
5. Legal persons are treated as nationals having the corresponding nationality.


Art.4
Priority
1. Any person having properly filed an application aimed at obtaining an industrial property title in, or for, one of the Countries party to an International Convention ratified by Italy acknowledging the right of priority or his successor in title, shall enjoy a right of priority as from the date of the first application, for the purpose of filing an application for an industrial patent, a utility model, a patent for new plant variety, a registration of a design or model and registration of a trademark, pursuant to the provisions set forth in Article 4 of the Paris Union Convention.
2. The period of priority shall be twelve months for invention patents and utility models and new plant varieties, and six months for designs and models and trademarks. 3. Any filing that is equivalent to a regular national filing under national legislation of the Country where it has been effected or under bilateral or multilateral agreements, i.e. which is adequate to establish the date on which the first application was filed, is recognized as adequate to give rise to the right of priority, irrespective of the further fate of such application.


Art. 5
Exhaustion of rights
1. The exclusive rights granted under this code to the holder of a right of industrial property exhaust when the products protected by a right of industrial property have been placed on the market by the holder or with his consent in the territory of the Country or in the territory of a member State of the European Union or of the European Economic Space.
2. However, the above mentioned limitation of the holder's rights does not apply to trademarks when legitimate reasons exist for the holder to oppose the further marketing of the products, in particular when the status of the same has been modified or altered after the introduction thereof on the market.
3. The exclusive rights recognized to the breeder of a protected variety and of the varieties substantially deriving from a protected variety when the latter is not, in turn, a substantially derived variety, to the breeder of varieties which are not clearly distinguishable from the protected variety and to the breeder of varieties the production of which requires a repeated use of the protected variety, do not extend to the following: a) the reproduction or vegetative multiplication material, whatever the shape is; b) the product of harvest, including entire plants and parts of the same; c) any product manufactured directly out of the harvested product and d) any other material deriving from those specified sold or marketed by the same breeder or with his consent in the Country's territory or in that of a member State of the European Union or of the European Economic Space, unless such acts result in a new reproduction or multiplication of the protected variety or in an exportation of material of the variety itself, in order to allow to reproduce the same in a Country where the variety of the vegetal genus or species to which it belongs is not protected, unless the exported material is for consumer use.

Art.6
Joint ownership
1.If an industrial property right is owned by several subjects, the related rights are regulated, unless otherwise provided for in agreements, by the provisions of the Civil code regulating the joint ownership to the extent compatible.


Chapter II
PROVISIONS REGULATING THE EXISTENCE, THE SCOPE AND THE EXERCISE OF INDUSTRIAL PROPERTY RIGHTS
Section I
TRADEMARKS


Art.7
Object of the registration
1. Any sign capable of being represented graphically, in particular words, including personal names, designs, letters, figures, sounds, the shapes of goods or their packaging, the combinations or chromatic shades, may be the object of registration as a trademark, provided that such signs are capable of distinguishing goods or services of one enterprise from those of other enterprises.

Art.8
Persons' portraits, names and renown signs
1. Persons' portraits shall not be registered as trademarks without the persons' consent and, after their deaths, without the spouse's and sons' consent; failing the latter or, after their death, of the parents' or other ancestors' consent, and, failing also the latter or after their death, of other relatives until the fourth degree included.
2. Persons' names other than those of the person who applies for registration may be registered as trademarks, provided that the use of such names is not such as to harm the fame, credit or decorum of the person who is entitled to use such names. The Italian Patents and Trademarks Office may, however, condition the registration to obtaining the consent as set forth in paragraph 1. In any case, the registration shall not prevent the legitimate holder of the right to the name from using it in the corporate name chosen by the same.
3. The following, if renown, may be registered as trademarks by the person holding the right, or with his consent or by the persons set forth in paragraph 1: names of persons, signs used in the fields of art, literature, science, politics and sports, the names or abbreviations of events and of entities and associations not having economic purposes as well as the characteristic badges or emblems.

Art.9
Shape trademarks
1. The signs which consist exclusively of the shape which results from the nature itself of the product, of the shape of the product which is necessary to obtain a technical result or of the shape which gives substantial value to the product may not be registered as trademarks.

Art. 10
Escutcheons
1. Escutcheons and other signs taken into account by international conventions currently in force and regulating this subject, in the cases and at the conditions mentioned thereby, as well as signs containing symbols, emblems and escutcheons which are of public interest shall not be registered as trademarks, unless the authorization to registration thereof has been granted by the competent authorities.
2. In case of a trademark containing words, images or signs having a political meaning or a highly symbolic value, or containing heraldic elements, the Italian Patents and Trademarks Office shall, before granting registration, send a sample of such trademark along with any other element which may be of use to the interested or competent public authorities, in order to receive their opinion, in accordance with the provisions of paragraph 4.
3. The Italian Patents and Trademarks Office may act as set forth in paragraph 2, in all cases where there is a doubt whether a trademark may be contrary to public policy or to accepted principles of morality.
4. If the interested or competent authority mentioned in paragraphs 2 and 3, expresses negative opinion as to the trademarks registration, the Italian Patents and Trademarks Office shall reject the application.

Art.11
Collective trademark
1. Persons whose function is to guarantee the origin, the nature or the quality of certain products or services, may obtain the registration of specific trademarks as collective trademarks, and have the right of allowing the use of such trademarks to producers or traders.
2. Regulations concerning the use of collective trademarks, and the controls and related sanctions, are to be attached to the application form for registration; amendments to the regulations must be communicated by the applicants to the Italian Patents and Trademarks Office in order for the same to be included among the documents attached to the application.
3. The provisions set forth in paragraphs 1 and 2 are also applicable to foreign collective trademarks registered in the country of origin.
4. Notwithstanding the provisions of Article 13, paragraph 1, a collective trademark may consist of signs or indications which may serve, in trade, to identify the geographical origin of the goods or services. However, in such event, the Italian Patents and Trademarks Office may reject registration, by a provision setting forth the reasons there for, when the requested trademarks may result into an unjustified privilege, or anyhow detriment to the development of other analogous initiatives in the same region. The Italian Patents and Trademarks Office may request the opinion of interested or competent public authorities, categories and bodies. The granted registration of a collective trademark consisting of a geographical name does not entitle the holder to prohibit any third party from using such name in the trade, provided such use is effected in compliance with professional fairness and therefore limited to the purpose of specifying the place of origin.
5. Collective trademarks are subject to all other provisions of this Code as long as not incompatible with the nature of the same.

Art.12
Novelty
1. Signs are not new, pursuant to Article 7 if, as of the date of filing of the application any of the following applies:
a) they consist exclusively of signs which have become customary in the current language or in the established practices of trade;
b) they are identical or similar to signs already known as trademarks or as distinguishing sign of products or services manufactured, marketed or rendered by others for identical or similar products or services, if due to the identity to or similarity of the signs and the identity to or similarity of the products or services there exists a likelihood of confusion for the public, which may also consist in the likelihood of association of two signs. A trademark which, pursuant to Article 6 bis of the Paris Union Convention for Industrial Property, text revised in Stockholm on July 14 1967, ratified by Law No. 424 of April 28, 1976, is known to the interested public, also due to the reputation acquired within the Country through the promotion of the trademark, shall also be considered as known. The prior use of the sign, when it does not imply reputation of the same, or implies a merely local reputation, does not imply the lack of novelty, but the third party pre-user has the right to continue the use of the trademark, also for advertising purposes, limited to local diffusion, notwithstanding the registration of the trademark itself. The prior use of the sign by the applicant or his assignor is not an obstacle to registration; c) they are identical or similar to a sign already known as a business name, corporate or trade name, outdoor sign and business domain name, adopted by others, if due to the identity or similarity between the signs and the identity or affinity between the business activity and the products or services for which the trademark is registered, there exists a likelihood of confusion on the part of the public, which may also include the likelihood of association between the two signs. The prior use of a sign, when it does not involve the sign having become renown, or involves it only being locally renown does not exclude the novelty. The prior use of a sign by the applicant or his assignor is no obstacle to registration;
d) they are identical to a trademark already registered by others in the Country or having effect in the Country following filing of an application on an earlier date or having effect from an earlier date based on the right of priority or on a valid claim of seniority of identical products or services;
e) they are identical or similar to trademarks which have already been registered by others in the Country or having effect in the Country following filing of an application on an earlier date or having effect from an earlier date based on the right of priority or on a valid claim of seniority for identical or similar products or services, if because of the identity or similarity between the signs or the identity or affinity between the products or services the likelihood of confusion on the part of the public may arise, which may also consist in the likelihood of association between the two signs;
f) they are identical or similar to trademarks already registered by others in the Country or having effect in the Country following filing of an application on an earlier date or having effect from an earlier date based on the right of priority or on a valid claim of seniority for products or services even if not similar, when the earlier trademark has, in the Community, in case of a Community trademark, or in the Country, a reputation and when the use without due cause of the following trademark would take unfair advantage from, or be detrimental to, the distinctive character or the reputation of the earlier trademark;
g) They are identical with, or similar to, trademarks already well known pursuant to Article 6 bis of The Paris Convention for Industrial Property for products or services even if not similar, when the conditions set forth in paragraph g) apply;
h) in the cases set forth in paragraphs d) and e) above, novelty is not excluded if the earlier trademark has expired more than two years before, or three years in case of a collective trademark or if the trademark can be considered as expired for lack of use pursuant to Article 26 at the time of filing the invalidity claim or exception. 2. For the purposes of paragraph 1) letters d), e) and f), earlier applications are considered equal to earlier registered trademarks, subject to the subsequent registration.

Art.13
Distinctive character
1. Trademarks lacking a distinctive character and in particular those consisting only of generic names of products or services or of descriptive indications referring to the same, such as signs which in trade may serve to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the product or of rendering of the service, or other characteristics of the product or service may not be the object of registration.
2. Notwithstanding paragraph 1 of this Article and Article 12, paragraph 1, letter a) those signs which, before the filing of the registration application, have acquired the distinctive character due to the actual use thereof, can be registered.
3. A trademark shall not be declared or considered as invalid if, before filing of the invalidity claim or exception, the sign which is its subject, has acquired the distinctive character due to its use.
4. A trademark is revoked if, as a consequence of any actions or of the inactivity of its holder, it has become in the trade the common name of a product or service or if it has lost its distinctive character.

Art. 14
Lawfulness
1. The following shall not be registered as trademarks:
a) signs contrary to the law, public policy or accepted principles of morality;
b) signs which are such as to deceive the public, in particular as to the geographical origin, nature, quality of products or services;
c) signs the use of which would result in the violation of third party's copyright, or industrial property right or of other third party's exclusive rights.
2. A trademark is revoked:
a) if, due to the way and to the context within which it is used by its holder or with his consent in respect of products or services for which it is registered, it has become such as to deceive the public, in particular as to the nature, quality or geographical origin of products or services;
b) if it has become contrary to the law, public policy or accepted principles of morality;
e) if the holder has failed to carry out the controls provided for by regulations concerning the use of collective trademarks.

Art. 15
Effects of registration
1. The exclusive rights set forth in this code are conferred upon registration.
2. The effects of the first registration become effective upon the date of filing of the application. In case of renewal, the effects of the same become effective from the expiry date of the prior registration.
3. Subject to the provision of Article 20 paragraph 1 letter c), registration only produces its effect limited to products and services therein indicated and to similar products or services.
4. Registration has a duration of ten years from the date of filing of the application, unless it is surrendered by the holder.
5. The surrender of the rights to a trademark becomes effective upon entry of the same in the trademark registry and information thereof must be published in the Official Bulletin.

Art.16
Renewal
1. Registration may be renewed for the same prior trademark, with reference to the same kind of products or services according to the international classification of products and services pursuant to the Nice Agreement, Geneva text of May 13, 1977, ratified by Law No. 243 of April 27, 1982.
2. Renewal is granted for periods of ten years each.
3. The renewal of the registration of a trademark which has been assigned for part of the products or services is carried out separately by the respective holders. 4. The effective date and the duration of the effects of the registration of trademarks registered with the World Intellectual Property Organization in Geneva remain unchanged.

Art.17
International registration
1. For the registration of trademarks with the WIPO in Geneva, the provisions currently in force pursuant to the international conventions remain in force. 2. International trademarks registered with the World Intellectual Property Organization (WIPO) in Geneva, based on the Madrid Agreement Concerning the International Registration of Trademarks, Stockholm text of July 14, 1967, ratified by Law No. 424 of April 28, 1976, and the relevant protocol adopted in Madrid on June 27, 1989, ratified by Law No. 169 of March 12, 1996, containing the designation of Italy as the Country where protection is requested, must comply with the requirements provided for national trademarks in the present code.
3. The Italian Patents and Trademarks Office carries out the examination of international trademarks designating Italy in compliance with the provisions applicable to domestic trademark applications.

Art.18
Temporary protection
1. Temporary protection may be granted, within the limits and conditions set forth in paragraph 2, through decree of the Ministry for Productive Activities, to new trademarks affixed to products or materials concerning the rendering of the services which are displayed within national or international exhibitions, official or officially recognized, taking place in the Country's territory or in a foreign Country granting reciprocity of treatment.
2. The temporary protection dates back the priority of the registration in favour of the holder or of his successor in title to the day of delivery of the product or of the material relating to the services for the exhibition, and produces its effect as long as the registration application is filed within six months from the date of delivery and in any case no later than six months after the opening of the exhibition.
3. For exhibitions taking place in a foreign Country, if a shorter time limit is established there, the registration application must be filed within such time limit. 4. Among several identical or similar trademarks for identical or analogous products or services displayed at an exhibition on the same day, priority is granted to the trademark for which the registration application has been filed earlier.
5. The dates set forth in paragraphs 2, 3 and 4 must be indicated by the interested party and mentioned in the registration certificate, after having been verified by the Italian Patents and Trademarks Office.

Art.19
Right to registration
1. Registration of a trademark can be obtained by anyone making use, or proposing to make use of it for manufacturing or trading products or for rendering services of his own enterprise or of enterprises under his control or using the trademark with his consent.
2. No trademark registration shall be granted to anyone who has applied for it in bad faith.
3. Registration of trademarks may be granted also to State, Region, District and Municipal administrations.

Art.20
Rights conferred by the registration
1. The rights of a registered trademark holder consist in the right to make exclusive use of the trademark. The holder shall be entitled to prevent all third parties from using the following in the course of trade unless his consent is granted:
a) any sign identical to the trademark for products or services identical to those for which the trademark is registered;
b) any sign identical to or similar to the registered trademark for identical or similar products or services, if due to the identity or similarity of the signs and the identity or similarity of products or services, there exists the likelihood of confusion on the part of the public, which may also consist in the likelihood of association of the two signs;
c) any sign identical or similar to the registered trademark for products or services even if not similar to each other, if the registered trademark has a reputation in the Country and if the use of the sign without due cause allows to take unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trademark. 2. In the cases set forth in paragraph 1, the holder of a trademark may in particular prohibit third parties from affixing the sign to the products or to the packaging thereof, offering the products, putting them on the market or holding them for such purposes, or offering or supplying services bearing that sign; importing or exporting products bearing that sign; using the sign on business papers and in advertising.
3. Traders may place their trademark on the products they sell, but may not delete the trademark of the manufacturer or of the trader from whom they have received the products or the goods.

Art.21
Limitation of the right on trademark
1. The rights conferred by a registered trademark do not entitle the holder to prohibit third parties from using the following in the course of trade: a) their names and addresses;
b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of a product or of rendering of a service, or other characteristics of a product or service;
c) the trademark when it is necessary to
indicate the intended purpose of a product or service, in particular such as accessories or spare parts, provided that it is used in accordance with professional fairness. 2. Trademarks may not be used in violation of the law, nor, in particular, so as to create the likelihood of confusion on the market with other signs known as distinguishing businesses, products or services of others, or so as to deceive the public, in particular as to the nature, quality or origin of the products and services, due to the way or context in which it is used, or so as to violate someone else's copyright, industrial property right, or other exclusive right of any third party. 3. Making use of a registered trademark after the registration has been declared invalid is forbidden, when the cause of invalidity results in the unlawfulness of the use of the trademark.

Art.22
Unity of the distinctive signs
1. Making use as a business name, corporate or trade name, sign and business domain name of signs identical or similar to a third party's trademark is prohibited when if, due to the identity or similarity between the business activities of the holders of such signs and the products and services for which the trademark has been adopted, there exists the likelihood of confusion on the public which may also consist in the likelihood of association between the two signs.
2. The prohibition set forth in paragraph 1 is extended also to the use as business name, corporate or trade name, outdoor, sign and business domain name of a sign identical or similar to a registered trademark for products or services even if not similar, which has a reputation in the Country when the use of such sign without cause would allow taking unfair advantage of the distinctive character or of the reputation of the trademark or be detrimental thereto.

Art.23
Assignment of a trademark
1. A trademark may be assigned in respect of all or part of the products or services for which it is registered.
2. A trademark may be licensed, also on a non-exclusive basis for all or part of the products or services for which it is registered and for the whole or part of the territory of the Country, provided that, in case of a non-exclusive license, the licensee expressly undertakes to use the trademark to distinguish the products or services equal to those traded or rendered in the territory of the Country with the same trademark by the holder or any other licensees.
3. The holder of a trademark may invoke the right to the exclusive use, conferred by that trademark against a licensee who violates the provisions of the license agreement as to duration, the manner of use of the trademark, the nature of the products or services for which the license has been granted, the territory within which the trademark may be used or the quality of the products manufactured and of the services rendered by the licensee.
4. In any event, the assignment or license of the trademark must not result in misrepresentation as to the characteristics of the products or services which are essential in the public's appreciation.

Art. 24
Use of a trademark
1. Under penalty of revocation, a trademark must be actually used by the holder or with the holder's consent, for the products or services in respect of which it has been registered, within five years from registration, and such use must not be discontinued for a continuous period of five years, unless such non-use is justified by a legitimate reason.
2. For the purposes of this Article 24, the use of a trademark in a modified form which does not alter its distinctive character as well as the affixing within the Country of the trademark on products or on their packaging for exportation purposes shall also be deemed to constitute use of the trademark.
3. Except for the case of rights on the trademark acquired by third parties through filing or use, no person may claim the revocation if, during the period between the expiry of the five-year period of non use and the filing of the revocation claim or exception, the actual use of the trademark has been started or resumed. However, if the holder makes preparations for the commencement or resumption of the use of the trademark only after having become aware that a revocation claim or exception was going to be filed, such commencement or resumption are not taken into consideration if they have not taken place at least three months before the filing of the revocation claim or exception; however the three month period is only taken into consideration if it starts after the expiry of the five-year period of non-use.
4. Furthermore, revocation for non-use shall not occur if the holder of the non-used trademark is also holder at the same time, of one or more trademarks similar to it still in force and for at least one of which he is actually making use in order to distinguish the same products or services.

Art.25
Invalidity
1. A trademark is invalid:
a) if any of the requirements set forth in Article 7 is lacking or if any of the obstacles to registration set forth in Article 12 exists; b) if it conflicts with the provisions set forth in Articles 9, 10, 13, 14 paragraphs 1 and 19, paragraph 2; c) if it conflicts with the provisions set forth in Article 8; d) in the case set forth in Article 118, paragraph 3, letter b)

Art.26
Revocation
1. A trademark is revoked:
a) due to its vulgarization pursuant to Article 13 paragraph 4;
b) for supervened unlawfulness pursuant to Article 14 paragraph 2;
c) for non-use pursuant to Article 24.


Art.27 Revocation and partial invalidity 1. If the reasons for revocation or invalidity of a trademark only exist in relation to part of the products or services for which the trademark is registered, the revocation or invalidity shall apply to such part of the products or services only

Art.28
Validation
1. The holder of an earlier trademark pursuant to Article 12 and the holder of a pre-use right on a trademark involving a reputation not purely local, who acquiesced, for a period of five consecutive years, in the use of a later registered trademark identical or similar to it while being aware of such use, may not claim the declaration of invalidity of the later trademark nor oppose the use of such trademark for products or services for which it has been used based on their earlier trademark or their pre-use, unless registration of the later trademark was applied for in bad faith. The holder of the later trademark may not oppose the use of the earlier one or the continuation of the pre-use. 2. The provisions set forth in paragraph 1 also apply to trademarks registered in violation of Articles 8 and 14 paragraph 1, letter c).

b Section II
GEOGRAPHICAL INDICATIONS

Art. 29
Object of the protection
1. Protection is granted to geographical indications and designations of origin identifying a country, a region or a place when used to describe a product originating in such place, and whose quality, reputation or characteristics are exclusively or essentially due to the geographical environment of origin, inclusive of inherent natural, human and traditional factors thereof.

Art.30
Protection
1. Subject to the provisions regulating unfair competition, to the international conventions regulating this subject and to trademark rights previously acquired in good faith, the use of geographical indications and of designations of origin is forbidden when such use is likely to deceive the public, as well as the use of any means whatsoever in the designation or presentation of a product which indicate or suggest that the same product originates from a place other than the actual place of origin, or that the product possesses the qualities pertaining to the products originating from a place designated by a geographical indication. 2. The protection referred to in paragraph 1 does not allow the holder to forbid third parties from using in their business activity their own names, or the name of the assignor of the same activity, unless such name is used in such a way so as to deceive the public.

Section III
DESIGNS AND MODELS

Art. 31
Object of the registration
1. Registration as designs and models may be granted to the appearance of the whole or a part of a product resulting, in particular, from the features of the lines, contours shape, texture, or materials of the product itself or of its ornamentation, provided that the same are new and have an individual character. 2. Product means any industrial or handicraft item, including, inter alia, parts intended to be assembled into a complex product, packaging, presentation, graphic symbols and typographic fonts, but not computer software.
3. Complex product means a product which is composed of several components which can be replaced and permit disassembly and reassembly of the product.

Art.32
Novelty
1. A design or model is new if no identical design or model has been divulged before the date of filing of the application for registration or, if priority is claimed, before the date of priority. Designs or models shall be deemed to be identical if their features differ only in minor details.

Art.33
Individual character 1. A design or model has an individual character if the overall impression it produces on the informed user differs from the overall impression produced on such user by any design or model which has been made available to the public before the date of the application for registration or, if priority is claimed, before the date of priority. 2. In ascertaining the individual character as set forth in paragraph 1, the degree of freedom of the designer in developing the design shall be taken into consideration.

Art.34
Disclosure
1. For the purposes of Articles 32 and 33, a design or model shall be deemed to have been disclosed if it has been made available to the public consequent to its registration or otherwise, or if it has been exhibited, placed on the market or otherwise divulged, unless where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community in the course of normal trade activity, before the date of filing of the application for registration or, if priority is claimed, before the date of priority.
2. The design or model shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit undertaking of confidentiality.
3. For the purposes of Articles 32 and 33, a design or model disclosed by its designer or his successor in title or by any other third person, as a result of information communicated or action taken by the designer or his successor in title, during the twelve-month period preceding the date of filing of the registration application or, if priority is claimed, before the date of priority, shall not be deemed as having been rendered available to the public.
4. Moreover, for the purposes of Articles 32 and 33, a design or model being made available to the public during the twelve-month period preceding the date of filing or the date of priority shall not be deemed to be disclosed, as a direct or indirect consequence of an abuse to the designer or his successor in title.
5. Disclosure which occurs during exhibitions, official or officially recognized, pursuant to the Convention concerning International exhibitions signed in Paris on November 22, 1928 as amended is not taken into consideration.

Art. 35
Complex product
1. The design or model applied to, or incorporated in, a component of a complex product only complies with the requirements of novelty and individual character if the following applies:
a) the component, once it has been incorporated into the complex product, remains visible during normal use of the same, that is during the use by the end-user, excluding maintenance, servicing or repair works, and b) the component's visible features fulfil by themselves the requirements as to novelty and individual character.

Art.36
Technical function
1. Features of appearance of a product which are solely determined by its technical function shall not be the object of registration as designs or models. 2. Features of appearance of products which must necessarily be reproduced in their exact shapes and dimensions in order to permit the product in which the design or model is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against another product so that each product may perform its function, may not be the object of registration as designs or models. However, designs or models meeting the requirements of novelty and individual character may be the object of registration when they serve the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

Art. 37
Duration of protection
1. Registration of a design or model has a duration of five years from the date of filing of the application. The holder may obtain the extension of protection for one or more five year periods each, up to a maximum duration of twenty-five years from the date of filing of the registration application.

Art. 38
Right on registration and effects
1. The exclusive rights on designs and models are conferred through registration. 2. The author of the design or model or its successors in title has the right on registration. 3. Except as agreed to the contrary, the right of registration of designs and models, created by employees, to the extent such work falls within the employees tasks, is the employer's, subject to in any case the employees' right to be recognized as the author of the design or model and to have his name mentioned in the registration certificate. 4. The effects of the registration are effective as of the date on which the application and the related documentation are rendered available to the public. 5. The Italian Patents and Trademarks Office makes the registration application along with the graphic reproductions or the samples and descriptions thereof, if any, available to the public after filing, unless the applicant in the application has excluded access, for a period which shall not exceed thirty months from the date of filing or of priority. 6. As to the persons to whom the application with the reproduction of the design or model and description, if any, has been served by the applicant, the effects of registration are effective as of the date of service.

Art.39
Multiple registration
1. Registration of more than that one design or model can be applied for through one single application as long as such designs or models are intended to be applied to, or incorporated in, objects belonging to the same class of the international classification of designs and models, pursuant to the provisions of the Locarno Agreement of October 8, 1968 and subsequent amendments, ratified by Law No. 348 of May 22, 1974. 2. Subject to the provisions set forth in paragraph 1 and in Article 40, an application concerning several registrations or one registration for several designs and models is not allowed. If the application is inadmissible, the Italian Patents and Trademarks Office shall require that the interested party, to whom a time limit is assigned, be limiting the application to the admissible part, without prejudice to his right to file as many applications as the remaining designs and models, which shall have effect from the date of the first application. 3. Registration concerning several models or designs can be limited upon petition of the holder to one or more of such models or designs. 4. The application or registration concerning a design or model not meeting the requirements for the validity may, upon petition of the holder, be maintained in its modified form, if the Italian Patents and Trademarks Office ascertains that in the modified form the design or model maintains its identity. The modification may also derive from a partial waiver by the holder or from the annotation in the registration certificate of a judgement declaring the partial invalidity of the same registration .

Art.40
Simultaneous registration
1. lf a design or model meets the requirements for registration and at the same time increases the utility of the object to which it refers, registration as utility model and as design or model may be applied for at the same time, but both protections cannot be combined in one single title.
2. If the registration application refers to an object the form or design of which confers to the same the novelty and individual character and at the same time increases the utility, the limitation procedure pursuant to Article 39, paragraph 2 modified as registered is applicable.

Art.41
Rights conferred by the design or model
1. The registration of a design or model shall confer to its holder the exclusive right to use it or to prevent any third party from using it without his consent. 2. The manufacturing, offering,release on the market, importing, exporting or use of a product in which the design or model is incorporated or to which it is applied, or the holding of such a product for those purposes constitute in particular use of the design or model. 3. The exclusive rights conferred through the registration of a design or model extend to any design or model not giving a different general impression to the informed user. 4. When determining the extension of protection the author's range of freedom in realizing the design or model is taken into consideration.

Art.42
Limitations to the design or model right
1. The rights conferred by the registration of the design or model do not extend to the following:
a) acts done privately and for non-commercial purposes;
b) acts done for experimental purposes;
c) acts of reproduction necessary for the purposes of making quotations or of teaching, provided that such acts are compatible with professional principles of fairness and do not unduly jeopardize the normal exploitation of the design or model, and that mention is made of the source.
2. The exclusive rights conferred through registration of a design or model shall not be exercised in respect of the following:
a) furniture and equipment aboard ships and aircraft registered in other countries temporarily entering the territory of the Country;
b) the importation into the Country of spare parts and accessories for the purpose of repairing the crafts mentioned under letter a);
e) the execution of repairs on the aforementioned crafts.

Art.43
Invalidity
1. Registration is invalid in the following cases:
a) if the design or model may not be registered pursuant to Articles 31, 32, 33, 34, 35 and 36;
b) if the design or model is contrary to public policy or to accepted principles of morality. The design or model are not to be considered to be contrary to public policy or to accepted principles of morality for the sole reason of being prohibited by a law or administrative provision;
c) if the holder of the registration was not entitled to obtain the same and the author did not make use of the rights under Article 118;
d) if the design or the model conflicts with a prior design or model which has been made available to the public after the date of filing of the application or, if priority is claimed, after the date of priority, but whose exclusive right becomes effective from a prior date as a consequence of a Community, national or international registration or application for registration;
e) if the design or model is such that its use would constitute a violation of a distinctive sign or of an intellectual work protected by copyright; f) if the design or model constitutes an incorrect use of any of the items listed in Article 6 ter of the Paris Union Convention for the protection of Industrial Property, Stockholm text of July 14, 1967, ratified by Law No. 424 of April 28, 1976, or of badges, emblems and escutcheons other than those covered by such Article and which are of particular public interest in the Country.
2. The invalidity of the registration of a design or model which is the object of prior rights pursuant to paragraph 1, letters d) and e) may be claimed solely by the person who is entitled to such rights or its successors in title.
3. The invalidity of the registration of a design or model constituting an incorrect use of any of the items listed in Article 6 ter of the Paris Union Convention for the Protection of Industrial Property or of other badges, emblems and escutcheons which are of particular public interest in the Country, may be claimed only by the person interested in the use thereof.

Art. 44
Duration of the right to the economic use of the copyright
1. The rights to the economic use of industrial designs and models protected pursuant to Article 2, paragraph 1, No. 10 of Law No. 633 of April 22, 1941, are valid for the entire life of the author and terminate at the end of the twenty-fifth calendar year after his death or after the death of the last of the co-authors.
2. The Ministry for Cultural Assets and Activities periodically communicates to the Italian Patents and Trademarks Office the data concerning the works filed pursuant to Article 103 of Law No. 633 of April 22, 1941, including title of the work, description of the object and author, name and place of domicile of the holder of the rights, date of publication as well as of any other entry or recording.
3. The Italian Patents and Trademarks Office records the data pursuant to paragraph 2 in the Official Bulletin, published pursuant to Article 189 of this code.

Section IV
INVENTIONS

Art.45
Object of a patent
1. New inventions implying an inventive step and suitable for industrial application may constitute the object of an invention patent.
2. The following shall not be considered as inventions pursuant to art 1 in particular:
a) discoveries, scientific theories and mathematical methods;
b) plans, principles and methods for intellectual activity, games or commercial activity and computer software;
c) presentations of information.
3. The provisions set forth in paragraph 2 exclude the patentability of the items there mentioned only to the extent that a patent application or patent concerns discoveries, theories, plans, principles, methods, programs and presentations of information considered as such.
4. Methods for surgical or therapeutic treatment of the human or animal body and methods for diagnosis applied to the human or animal body are not considered as inventions under paragraph 1. This provision does not apply to products, particularly to substances or mixtures of substances, for the realization of one of the named methods. 5. Races of animals, and essentially biological procedures aimed at obtaining the same may not constitute the object of a patent. This provision does not apply to microbiological procedures and to products obtained through such procedures.

Art.46
Novelty
1.An invention is considered new if it is not included in prior art.
2. Prior art consists of all that has been rendered accessible to the public within the territory of the Country or abroad before the filing date of the patent application, through oral or written description, use or any other means.
3. The contents of applications for a national, European or international patent designating Italy and producing effects therein, as filed, having an earlier filing date than that mentioned in paragraph 2 and having been published or rendered accessible to the public on the same date or later on, are also considered as included in the state of prior art.
4. The provisions set forth in paragraph 1, 2 and 3 do not exclude the patentability of a substance or a combination of substances already included in prior art, provided that this is for the purpose of a new use.

Art. 47
Non opposable disclosures
1. For the purposes of Article 46, a disclosure of the invention is not taken into consideration if it has occurred during the six months preceding the filing date of the patent application and results directly or indirectly from an evident abuse to the detriment of the applicant or its assignor.
2. The disclosure which occurred during official or officially recognised exhibitions falling within the Convention Regulating International Exhibitions, signed in Paris on November 22, 1928, as modified, is also not taken into consideration.
3. As to inventions for which priority, pursuant to international conventions, has been claimed, the existence of the novelty requirement shall be evaluated with reference to the date to which priority dates back.

Art.48
Inventive step
1. An invention is deemed to imply an inventive step if such invention is not obviously included in the prior art for a person expert of field. If the prior art includes the documents mentioned under paragraph 3 of Article 46, such documents are not taken into consideration for the evaluation of the inventive step.

Art.49
Industrial character
1. An invention is considered as being suitable for an industrial application if the relevant object can be manufactured or used in any sort of industry, including agriculture.

Art. 50
Lawfulness
1. lnventions, the realization of which violates public policy or accepted principles of morality may not be the object of an invention patent.
2. The realization of an invention cannot be considered as violating public policy or accepted principles of morality for the sole reason of being forbidden by a law or an administrative provision.

Art.51
Sufficient description
1. The description and the drawings necessary for the purposes of comprehension of the invention must be attached to the invention patent application. 2. An invention must be described in a sufficiently clear and comprehensive manner so that any person with knowledge of the same technical field may implement it and must be identified by a title corresponding to its object.
3. If an invention concerns a microbiological procedure or a product obtained through such procedure and implies the use of a micro-organism not accessible to the public and which cannot be described in such a way as to allow any person expert in the same technical field to implement the invention, the patent application shall comply, as to the description, with the provisions set forth in the regulation.

Art.52
Claims
1. A description must start with a summary having as its sole scope that of providing technical information and must end with one or more claims specifically indicating what is meant to be the object of the patent.
2. The scope of protection is determined by the text of the claims. However, the description and the drawings shall be used to interpret the claims. 3. The provision set forth in paragraph 2 must be framed so as to ensure, at the same time, an equitable protection to the holder and a reasonable legal certainty to third parties.

Art.53
Effects deriving from patents
1. The exclusive rights set forth in this code are conferred through the grant of patents.
2. A patent produces effects from the date on which the application together with the description and drawings, if any, is rendered accessible to the public. 3. After a period of eighteen months from the application filing date or from the date of priority, or after ninety days from the date of filing of the application, if the applicant has declared in the application that the same may be made immediately accessible to the public, the Italian Patents and Trademarks Office makes the application and the relevant attachments accessible to the public.
4. The effects of a patent for industrial invention vis-à-vis the persons to whom the application together with the description and the drawings, if any, have been served by the applicant become effective from the date of service.

Art.54
Effects of applications for a European patent
1. The protection conferred through the application for a European patent pursuant to Article 67, paragraph 1, of the European Patent Convention of October 5, 1973, ratified by Law No. 260 of May 26, 1978, becomes effective from the date when the applicant has rendered accessible, through the Italian Patents and Trademarks Office, a translation into the Italian language of the claims or has served the same directly on the alleged counterfeiter.
The effects of the application for a European patent are considered invalid ab initio when the same application has been withdrawn or rejected, or when the designation of Italy has been withdrawn.

Art.55
Effects of the designation or election of Italy
1. The international application filed pursuant to the Cooperation Treaty for Patents, ratified by Law No. 260 of May 26, 1978, and including the designation or election of Italy is equivalent to an application for a European patent, in which Italy was designated and produces effects thereof pursuant to the European Patent Convention of October 5, 1973, ratified by Law No. 260 of May 26, 1978, and by the latter's implementing regulations.

Art.56
Rights conferred by European patents
1. A European patent issued for Italy confers the same rights and is subject to the same regime as Italian patents from the date on which mention of the grant of the patent is published in the European Patent Bulletin. If, following the opposition procedure, a patent is maintained in an amended form, the limits to protection as set forth in the grant and maintained are confirmed from the date on which mention of the decision concerning the opposition is published. 2. Counterfeits are evaluated according to the Italian legislation regulating the matter. 3. A holder must provide to the Italian Patents and Trademarks Office an Italian translation of the text of the patent granted by the European Office as well as of the text of the patent as maintained in an amended form following the opposition procedure. 4. The translation, declared as being the same as the original text by the patent holder or by his attorney, must be filed within three months from the date of each of the publications mentioned in paragraph 1. 5. In case of violation of the provisions set forth in paragraphs 3 and 4, the European Patent is considered having no effect in Italy ab initio.

Art.57
Text of the European patent application or authentic European patent text 1. The text of the application for a European patent or the text of a European patent, drafted in the language required for the procedure before the European patent office, defines and certifies the scope of the protection, except for the provisions set forth in Article 70 paragraph 2, of the European Patent Convention of October 5, 1973, ratified by Law No. 260 of May 26, 1978. 2. However, the Italian translation of the deeds concerning the filing of the application and the grant of a European patent is considered authentic in the Country if it confers a less wide scope of protection than that conferred by the text drafted in the procedure language of the European Patent Office. 3. The provision set forth in paragraph 2 does not apply in case of invalidity actions. 4. A rectified translation may be filed, at any time, by the holder of an application or of a patent; such translation is only effective after it has been made accessible to the public at the Italian Patents and Trademarks Office or served to the alleged counterfeiter. 5. Whoever in good faith, has started to implement an invention in Italy, or has carried out actual preparations to this purpose, without such implementation constituting an infringement of the application or of the patent in the text of the translation initially filed, may continue with the exploitation of the invention at his enterprise or for the needs of the same royalty free even after the date on which the rectified translation has started to be effective.

Art.58
Transformation of the European patent application 1. A European patent application, where Italy has been designated, may be transformed into an application for an Italian industrial invention patent in the following cases: a) in the cases set forth in Article 135, paragraph 1, letter a, of the European Patent Convention of October 5, 1973, ratified by Law No. 260 of May 26, 1978; or b) in case of non compliance with the time limit set forth in Article 14, paragraph 2, of the European Patent Convention, when the application was initially filed in the Italian language. 2. The transformation into a national application for utility model of an application for European patent which has been rejected, withdrawn or considered withdrawn or of the revoked European patent, the object of which meets the patentability requirements as set forth in the Italian legislation regulating utility models is allowed. 3. Persons requesting a transformation as set forth in paragraph 1, may contemporaneously request the transformation into a utility model application pursuant to Article 84. 4. If a request for transformation pursuant to paragraphs 1, 2 and 3 has been transmitted to the Italian Patents and Trademarks Office, the patent application is deemed to have been filed in Italy on the same filing date as the European patent application; the papers attached to such application which have been filed with the European Patent Office are deemed to have been filed in Italy on the same date.

Art.59
Prevailing of the European patent in case of multiple protection 1. If for the same invention an Italian patent and a European patent valid in Italy have been granted to the same inventor or to his successor in title with the same filing date or priority date, the Italian patent, to the extent that it protects the same invention as the European patent, ceases to produce its effects as of the date on which: a) the time limit for the opposition to the European patent has expired without any opposition being filed, or b) the opposition procedure has definitely been concluded, maintaining the European patent, or c) the Italian patent has been issued, if the date is subsequent to the dates set forth under letters a) or b). 2. The provisions set forth in paragraph 1 remain applicable even if, on a later date, the European patent is invalidated or revoked. 3. Upon expiry of the time limit set forth in paragraph 1, whoever has initiated an action aimed at obtaining protection of the Italian patent, may request the conversion thereof into the corresponding action directed at protecting the European patent, subject to the rights deriving from the Italian patent for the preceding period.

Art.60
Duration
1. An industrial invention patent lasts for twenty years starting from the date of filing of the application and may not be renewed nor can its duration be extended.

Art. 61
Complementary protection certificate
1. Complementary protection certificates granted pursuant to Law No. 349 of October 19, 1991, are regulated by the same provisions as applicable to patents, with the same exclusive rights and obligations. Complementary protection certificates produce the same effects as patents to which they refer, limited to part or parts thereof relating to the drug object of the authorization for the release on the market. 2. The effects of the complementary protection certificate become effective from the time when the patent reaches its expiry date and are extended for a duration equal to the timeframe which elapsed between the date of filing of the patent application and the date on which the decree through which the first authorisation for placing the drug on the market was granted.
3. The duration of the complementary protection certificate shall not, in any case, exceed eighteen years from the date when the patent reaches its legal expiration. 4. In order to progressively adjust the duration of the coverage of complementary patent protection in order to meet that provided for in EU provisions, the provisions set forth in Law No. 349 of October 19, 1991, and in EC Regulation No. 1768/1992 of the EU Council dated June 18, 1992, are put into effect through a reduction of the complementary protection of six months for each calendar year, starting from January 1, 2004, until complete alignment with European legislation. 5. The enterprises wishing to produce pharmaceutical specialties outside the patent coverage may start the registration procedure of a product containing the active principle one year before the expiry of the complementary patent coverage of the active principle.

Art. 62
Moral right
1. The right to be recognized as the author of an invention may be exercised by the inventor and, after his death, by his spouse and by his descendants until the second degree, if none, or after their death, by his parents and by the other ascendants and if no such persons, or after their death, by the relatives until the fourth degree.

Art.63
Economic rights
1. The rights deriving from industrial inventions, except for the right to be recognized as the author thereof, can be assigned and transferred.
2. The right on industrial invention patents appertains to the author of the invention and to his successors in title.

Art. 64
Employees' inventions
1. When an industrial invention is made in performance or in execution of a contract or of an employment relationship, whereby the inventive activity is provided for as the object of the contract or of the relationship and for such purpose an employee receives compensation, the rights deriving from such invention are the employer's, subject to the inventor's right to be recognized as the author thereof.
2. If no compensation for the inventive activity is provided for and established, and the invention was made in the execution or fulfilment of a contract or of an employment relationship, the rights deriving from the invention are the employers', but the inventor, in addition to his right to be recognised as the author thereof, is entitled, if the employer obtains a patent, to be granted a fair reward, the amount of which shall be quantified taking into consideration the importance of the protection afforded by the patent to the invention, the tasks carried out and the compensation received by the inventor, as well as of the contribution that the latter has received from the employer's organization.
3. If the conditions set forth in paragraphs 1 and 2 are net met, and the industrial invention at issue falls within the employer's field of activity, the latter shall have the right of first refusal on the exclusive or non-exclusive use of the invention, or on the purchase of the patent, as well as the right to request or purchase, for the same invention, patents abroad against payment of a fee or price, to be established by taking into account the deduction of a sum corresponding to the support that the inventor has received from the employer in order to achieve the invention. An employer may exercise the right of first refusal within three months from receipt of the notice of filing of the patent application. The relationships established through the exercise of the right of first refusal shall automatically terminate if the due compensation is not entirely paid upon expiry of the time limit.
4. Subject to the ordinary courts having jurisdiction as to the ascertainment of the existence of the right to a fair reward, to the fee or the price, in case no agreement is reached as to the amount of the same, even if the inventor is an employee of a State administration, a panel of three arbitrators shall establish the amount due. The arbitrators shall be appointed one by each party and the third by the first two arbitrators, or, lacking agreement thereon, by the President of the specialized division of the competent Court having jurisdiction where the employee usually carries out his tasks. Articles 806 and following of the Italian Code of Civil Procedure shall apply, to the extent compatible.
5. The arbitration panel may be sought even if a court trial is pending for the assessment of the existence of the right to a fair award, fee or price, but, in such event, the enforceability of the award is subject to that of the judgment on the assessment of the right. The Arbitration panel shall proceed by fair evaluation. If the determination is manifestly unfair or erroneous, the determination shall be made by the judge. 6. For the purposes of paragraphs 1, 2 and 3, an industrial invention for which a patent has been requested within one year prior to the date when the inventor has left the company or the public entity in the activity field of which the invention falls, is deemed to prove to have been made during the execution of the contract or of the employment relationship.

Art.65
Inventions of researchers in universities and public research entities 1. Notwithstanding Article 64, when a working relationship is with a university or a public administration entity having the research as one of its institutional purposes, a researcher is the exclusive holder of the rights deriving from the patentable invention of which he is the author. In case of more authors, who are employees of universities, of the above mentioned public administration entities or of other public administration entities, the rights deriving from the invention are owed in equal parts to all of them, except as otherwise agreed. An inventor shall file his patent application and communicate the same to the administration entity. 2. Universities and public administration entities, within the scope of their autonomy, establish the maximum amount of the fee, owed to the same university or to public administration entities, or to private entities financing the research, as well as any further profile of the reciprocal relationships for licenses granted to third parties for the use of the invention. 3. In any case, an inventor has the right to receive not less than 50 percent of the income or of the fees for the exploitation of an invention. Should the universities or public administration entities not fix the amounts as set forth in paragraph 2, they shall have the right to receive 30 percent of the income or fees received for the inventions. 4. After five years elapse from the date of issuance of a patent, should the inventor or his successors in title not have initiated any industrial exploitation of the invention, unless this has happened for causes beyond their control, the public administration entity of which the inventor was an employee at the time of the invention, automatically acquires a royalty-free non-exclusive right to exploit the invention and the economic rights thereby connected, or to have them exploited by third parties, subject to the right of the inventor to be recognised as the author thereof. 5. The provisions set forth in this Article do not apply to researches financed, in whole or in part, by private entities, or implemented in the framework of specific research projects financed by public entities other than the university, entity or administration which the researcher belongs to.

Art.66
Patent right
1. Patent rights for industrial inventions consist in the exclusive right to implement the invention and obtain a reward therefrom in the Country's territory, within the limits and on the conditions set forth in this code. 2. In particular, the patent confers to its holder the following exclusive rights: a) if the object of a patent is a product, the right to forbid third parties from producing, using, releasing on the market, selling or importing for such purpose, the product at issue other than with the holder's consent; b) if the object of a patent is a process, the right to forbid third parties from applying such process, as well as from using, placing on the market, selling or importing for such purposes the product directly obtained from the process at issue, other than with the holder's consent.

Art.67
Patent directed to a method
1. In case of a patent directed to a method, any product identical to that obtained through the patented method, is deemed to have been obtained, unless evidence is given to the contrary, through such method, in any of the following cases: a) if a product obtained through the method is new; or b) if there is a substantial probability that the identical product has been manufactured through the method and if the patent holder has not been able through reasonable efforts to determine the method which he has actually implemented. 2. For the purposes of contrary evidence, the legitimate interest to the protection of his manufacturing and commercial secrets of the defendant sued for counterfeiting, must be taken into account. 3. When the holder of a patent relating to a new method or an industrial process, supplies means univocally aimed at implementing a patent's object to third parties, it is presumed that he has also granted to such third parties a license to make use of such method or process unless understandings to the contrary exist.

Art. 68
Limits to patent rights
1. The exclusive right granted by a patent does not extend, no matter what the object of the invention, to the following: a) to acts carried out privately and for non-commercial purposes, or in an experimental manner even if aimed at obtaining, also in foreign countries, an authorisation for the release on the market of a drug and to the consequent practical fulfilments thereof, including preparation and use of pharmacologically active raw materials strictly necessary for such purpose; b) to the extemporaneous preparation of drugs in pharmacies, upon medical recipes, and to the drugs so prepared, as long as industrially made active principles are not used. 2. An industrial invention patent, the implementation of which implies that of inventions protected by prior patents for industrial inventions still in force, may not be implemented, nor used, without the consent of the patents holders. 3. Anyone making use within his enterprise of an invention during the twelve months prior to the date of filing of the patent application or to the priority date, can continue making use of the same within the limits of the pre-use. Such right can only be assigned together with the enterprise in which the invention is being used. The burden of the proof of pre-use and of its extension shall reside with the pre-user.

Art.69
Obligation to implement 1. An industrial invention being the object of a patent must be implemented within the territory of the Country in such a measure as not to be seriously disproportioned to the Country's needs.
2. Inventions concerning objects which, for the first time, appear in an official or officially recognized exhibitions, taking place in the territory of the Country, are deemed to have been implemented from the date on which the objects are introduced therein until closing of the same, as long as they have been displayed for at least ten days, or, in case of a shorter exposition, for the entire period of the same. 3. The introduction or the sale within the territory of objects produced in Countries other than member Countries of the European Union, of the European Economic Space, of the World Trade Organisation do not constitute an implementation of an invention.

Art. 70
Compulsory license for lack of implementation
1. After three years from the date of issuance of a patent, or four years from the date of filing of the application, whichever is the later, should the patent holder or his successor in title, either directly or through one or more licensees, not have implemented the patented invention, by producing in the territory of the Country or importing objects produced in a member Country of the European Union, of the European Economic Space or in one of the member Countries of the World Trade Organisation, or should he have implemented the invention in such a measure as to result in serious disproportion to the country's needs, a compulsory license may be granted for the non-exclusive use of such invention to any interested third party requesting such license. 2. A compulsory license as set forth in paragraph 1 may also be granted if the invention has been suspended or reduced for more than three years to such a quantity as to result in serious disproportion to a Country's needs. 3. A compulsory license shall not be granted if the absent or insufficient implementation is due to causes beyond the independent patent holder's control or that of his successor in title. Such causes do not include the lack of financial means and, if the product is diffused abroad, the lack of demand in the domestic market for the patented product or that obtained through the patented process. 4. The grant of a compulsory license does not exempt the patent's holder, or his successor in title, from the obligation to implement the invention. A patent is revoked when the invention has not been implemented within two years from the date of grant of the first compulsory license or when it has been implemented in such measure as to result in a serious disproportion to the Country 's needs.

Art.71
Dependent patent
1. A compulsory license may be granted if the invention protected by a patent cannot be used without jeopardizing the rights of a patent granted based on a prior application. In such event, a license can be granted to the holder of the later patent in such a measure as to allow the same to exploit the invention, as long as the latter represents, compared with the object of the prior patent, a material technical progress having a substantial economic value. 2. A license so obtained may not be assigned otherwise than together with the patent for the dependent invention. The holder of the main patent, in turn, has the right to be granted a compulsory license on the patent of the depending invention, at reasonable conditions.

Art.72
General provisions
1. Whoever requests the grant of a compulsory license pursuant to Articles 70 and 71, must provide evidence to have previously contacted the patent holder and not to have been able to obtain a contractual license at fair conditions from him. 2. A compulsory license shall only be granted against payment of a fair consideration by the licensee to the patent holder or to his successors in title, as long as the requesting party furnishes the guarantees requested as to the satisfactory implementation of the invention if made pursuant to the conditions established in the license. 3. A compulsory license shall not be granted when it appears that the applicant has counterfeited the patent unless evidence of good faith is provided. 4. A compulsory license may be granted for the exploitation of an invention predominantly aimed at provisioning the domestic market. 5. A compulsory license is granted for a duration not exceeding the remaining duration of the patent and, unless authorized by the patent holder or his successors in title, it may only be assigned along with the licensee's business or with the particular branch of business in which the license is being used. 6. The grant of a compulsory license does not jeopardize the exercise, also on the part of the licensee, of a judicial action in respect of the validity of the patent or of the extension of the rights arising therefrom. 7. The decree granting the license shall establish the scope, the duration and the manner for the implementation, the warranties and any other conditions to which the grant is subject with respect to the purpose of the same and the amount and payment method of the compensation. In case of opposition, the amount, payment method and compensation are determined pursuant to Article 80. 8. The conditions of the license may be modified upon request of each interested party, through decree of the Ministry of Productive Activities, if valid reasons therefor exist. 9. As to modification of the compensation, Article 80 shall apply. 10. If the holder of the patent for which a compulsory license has been granted or his successor in title grants the use of the same patent to third parties at more favourable conditions than those set forth for the compulsory license, such more favourable conditions are extended to the compulsory license, upon the licensee's request.

Art.73
Revocation of compulsory licenses
1. A compulsory license is revoked by decree of the Ministry of Productive Activities when the conditions set forth for implementing the invention are not fulfilled, or when the license holder has not paid the compensation in the amount and in the manner required. 2. A compulsory license is also revoked by decree of the Ministry of Productive Activities if and when the circumstances having determined the grant thereof cease to exist and are unlikely to occur again, or upon the parties' mutual request. 3. Revocation may be requested by the patent holder by request filed with the Italian Patents and Trademarks office, which shall promptly inform the holder of the compulsory license through registered mail with return receipt. Within sixty days from the receipt of the registered mail, the latter may file opposition to the revocation containing the reasons thereof with the Italian Patents and Trademarks office. The provisions set forth in Article 199, paragraphs 3, 4, 5, 6 and 7 shall apply. 4. In case of revocation, the subject who had obtained the license may implement the invention at the same conditions, within the limits of the pre-use or those resulting from significant and effective preparations.

Art.74
Military inventions
1. The provisions concerning the grant of a compulsory license by reason of absent or insufficient implementation of the inventions, or those concerning the dependent patent, do not apply to patented inventions owned by the military administration or by those subject to secrecy by the military administration.

Art.75
Revocation due to non-payment of fees
1. An invention patent is revoked for non-payment of the annual fee due, within six months of expiry thereof, subject to compliance with the provisions set forth in paragraphs 2, 3 and 4. 2. After the month when the annual fee expires and after the subsequent six months during which payment is permitted subject to a delay-penalty, and in any case after expiry of the time limit for the payment of the fee, the Italian Patents and Trademarks Office serves notice on the interested party, through registered mail that the payment of the fee due has not been settled within the established time limit. After thirty days from the mentioned communication, the Italian Patents and Trademarks office, through specific annotation on the patent registry acknowledges the revocation of the patent for non-payment of the annual fee, and publishes the notice of revocation in the Official Bulletin. 3. The patent holder proving to have timely settled the payment, may ask, by a request to the Appeal Commission, to be filed within six months from the date of publication in the Official Bulletin for the cancellation of the above mentioned annotation, the revocation and the correction of the publication. The Commission shall so act, after hearing the interested party, or his agents, and having taken into account their written observations, if any. Both the filing of the request, and the ruling part of the judgment shall be entered in the patent registry and published in the Official Bulletin. 4. Once the publication under paragraph 2 has been carried out, and after six months from such publication, or if the request has been rejected, the patent shall be considered as revoked vis-à-vis any party as of the end of the last year for which fees were duly paid.

Art.76
Invalidity
1. A patent is invalid:
a) if the invention is not patentable pursuant to Articles 45, 46, 48, 49, and 50; b) if, pursuant to Article 51, the invention has not been described in a sufficiently clear and complete manner so as to allow an expert person to implement the same; c) if the patent object extends beyond the contents of the initial application; or d) if the patent holder was not entitled to obtain it and the entitled subject did not avail himself of the rights granted to him pursuant to Article 118. 2. If the invalidity causes only partially affect the patent, the relevant judgment stating the partial invalidity results in the corresponding limitation of the patent itself. 3. An invalid patent may produce the effects of another patent, of which it meets the validity requirements and which would have been sought by the applicant, had he been aware of the invalidity. The conversion claim may be proposed in any state and degree of the proceeding. The judgment ascertaining the existence of the requirements for the validity of another patent also establishes the conversion of the invalid patent. Within six months from the conversion judgment becoming definitive, the holder of the converted patent, files an application for the amendment of the text of the patent. The Office, after verifying the correspondence between the text and the judgment, makes the former accessible to the public. 4. Should the conversion involve an extension of the original duration of the invalid patent, the licensees and those who in light of the forthcoming expiration of a patent had carried out significant and effective investments for making use of the object of the patent, shall have the right to obtain a royalty-free, non-exclusive, compulsory license for the longer period of duration. 5. A European patent may be declared invalid for Italy pursuant to this Article, as well as when the protection conferred by a patent has been extended.

Art.77
Effects of invalidity
1. A declaration of invalidity of a patent has a retroactive effect, but it is without prejudice to: a) acts enforcing definitive infringement decisions if already put in place; b) contracts, the object of which is an invention, executed prior to the date when the judgment declaring the invalidity became definitive, to the extent that they have already been performed. In such event, however, the judge taking into account all circumstances, may grant a fair refund of the amounts already paid in execution of the contract; c) payments already carried out pursuant to Articles 64 and 65 as fair reward, fee or price.

Art. 78
Waiver
1. A holder may waive his right to a patent through a deed received by the Italian patents and trademarks office, to be entered in the patent registry. 2. If, in relation to a patent, deeds or decisions are recorded, which attribute or ascertain third parties' economic rights to a patent, or judicial claims through which the attribution or the ascertainment of such rights is sought, the waiver does not produce any effect if it does not come with a written consent of such third parties.

Art.79
Limitation
1. A patent may be limited, upon request by its holder, to which the description, the claims and the modified drawings must be attached. 2. Should the Italian Patents and Trademarks office uphold the request, the requesting party shall again pay the fee for the publication and printing of the description and of the drawings if the printing of the originally granted patent was already carried out. 3. The request for the limitation shall not be upheld if an invalidity proceeding of a patent is pending and until the relevant judgment has become definitive. Nor can such request be held to be lacking the consent of the third parties having recorded deeds or decisions granting or ascertaining economic rights or judicial claims through which the grant or ascertainment of such rights is requested. 4.Notice of the patent limitation is published by the Italian Patents and Trademarks office in the Bulletin.

Art.80
Statutory license
1. An applicant or a patent holder may offer to the public a license for the non-exclusive use of the invention in the application or by a request which may also be filed by the patent attorney at the Italian Patents and Trademarks Office, if no exclusive license has been registered. 2. The effects of a license run from the notice of acceptance of the offer to the holder, even if compensation has not been accepted. 3. In such latter case, the determination of the amount and payment methods of the compensation shall be established by an arbitration panel, consisting of three members, appointed one by each party and the third by the first two arbitrators or, in case of disagreement, by the president of the appeal commission. The arbitration panel shall decide based on fair determination. If the determination is manifestly unfair or erroneous, or if either party refuses to appoint its own arbitrator, the determination is made by the judge.
4. The consideration may be modified in the same way as prescribed in the determination of the initial one should any facts occur or become known, which cause the already determined consideration to appear manifestly inadequate.
5. An applicant or a patent holder having offered to the public a license on the patent, are entitled to enjoy a reduction to a half of the annual fees. 6. The reduction is granted by the Italian Patents and Trademarks office. The offering declaration is entered in the patent registry and published in the Bulletin and its effects remain valid until it is revoked.

Art.81
Voluntary license on active principles upon mediation of the Minister
1. Third parties wishing to produce active principles for exportation purposes covered by complementary protection certificates granted pursuant to Law No. 349 of October 19, 1991, are allowed to initiate, with the holders of the mentioned certificates, a procedure before the Productive Activity Ministry aimed at the issuance of voluntary non exclusive licenses for consideration pursuant to the law provisions regulating the subject matter. 2. Licenses referred to in paragraph 1, are valid only for the exportation to countries where protection of patents and of complementary protection certificates does not exist, has expired or where exportation of the active principle does not constitute infringement of the relevant patent pursuant to law provisions existing in the countries of destination. 3. The license ceases to produce its effects upon expiry of the complementary certificate to which it refers.

Section V
UTILITY MODELS


Art.82
Object of the patent
1. New models capable of conferring a particular effectiveness or ease of application or of use, to machines, or part of the same, to instruments, tools or objects of general use such as new models consisting in particular conformations, dispositions, configurations or combinations of parts, may constitute the object of utility model patents. 2. Patents for machines in their entirety do not encompass protection of single parts thereof. 3. The effects of a utility model patent extend to models having equal utility, as long as they utilize the same innovative concept.

Art.83
Right on a patent
1. The right on a patent is recognised to the author of the new utility model and to his successors in title.

Art.84
Alternative patenting
1. A person applying for an industrial invention patent, pursuant to this code, may also contemporaneously file an application for a utility model patent, the validity of which is conditioned upon the application being rejected or being accepted only in p

Art. 2. If an application has as its object a model instead of an invention or viceversa, the Italian Patents and Trademarks office shall invite the interested party, granting him a time limit, to modify its application. However, the application shall produce effect as of the original filing date. 3. If a utility patent application also contains an invention or viceversa, Article 161 shall apply.

Art. 85
Duration and effects of patenting
1. The duration of a utility model patent is ten years from the filing of the relevant application. 2. The rights conferred and the starting date of the effects of such patent are regulated pursuant to Article 53.

Art. 86
Cross-reference
1. The provisions of Section IV concerning industrial inventions, extend also to utility models, in addition to such inventions to the extent applicable. 2. In particular, the provisions regulating employees' inventions and compulsory licenses are extended to patents for utility models.

Section VI
TOPOGRAPHIES OF SEMICONDUCTOR PRODUCTS


Art.87
Object of protection
1. Every finished or intermediate product meeting the following requirements is a semiconductor product: a) if it consists of a series of materials including a layer of semiconductor material; b) if it includes one or more layers made up of conductor or insulating or semiconductor material and arranged in accordance with pre-fixed three-dimensional scheme; c) if it is destined to carry out an electronic function, exclusively or together with other functions. 2. The topography of a semiconductor product consists of a sequence of correlated drawings, however fixed or codified: a) representing the three-dimensional scheme of layers making up a semiconductor product; b) in which every image reproduces, wholly or in part, a surface area of the semiconductor product in any phase of its production.

Art. 88
1. Topographies resulting from their author's creative intellectual effort, which are uncommon or unusual within the sphere of semiconductor products' industry may constitute the object of exclusive rights.
2. Topographies resulting from a combination of common place or usual elements may also constitute the object of exclusive rights, to the extent that the combination of such elements meets the requirements as per paragraph 1.

Art.89
Entitlement to protection
1. Exclusive rights on topographies of semiconductor products fulfilling the protection requirements appertain to the author and its successors in title. 2. Should a topography be created in the framework of an employment relationship, Article 64 shall apply. 3. Should a topography be created in the execution or performance of an agreement other than an employment agreement, the right to the protection shall appertain to the purchaser of the topography, unless provided otherwise in the agreement.

Art.90
Contents of rights
1. The exclusive rights upon semiconductor products topographies consist in the following: a) copying such topography, totally or partially, in any way or form; b) exploiting, holding or distributing for commercial purposes, or importing a topography or a semiconductor product in which such topography is printed. 2. Commercial exploitation consists in the selling, renting, leasing or any other method of commercial distribution, or in the offering for such purposes.

Art.91
Restriction of the exclusive rights
1. The protection granted to the topographies of semiconductor products does not extend to concepts, processes, systems, technologies or codified information included in the topographies. 2. Exclusive rights as provided in Article 90 do not extend to reproductions made within a private sphere or by way of experiment or for the purpose of teaching, analyzing or evaluating topographies and concepts, procedures, systems or technologies included in the same topographies. 3. Exclusive rights may not be asserted in relation to topographies invented by third parties on the basis of analysis or evaluation made in accordance with paragraph 2, if such topographies meet the protection requirements.

Art. 92
Registration
1. Semiconductor products' topography may be protected to the extent that: a) registration thereof is requested in Italy or, if the topography has been previously commercialized anywhere in the world, registration thereof is required within two years from the date of such first commercial exploitation, as long as such date is specified in an appropriate written declaration. For such purposes, commercial exploitation does not include the exploitation under confidentiality, in which no further distribution to third parties has been made, unless the exploitation of the topography is carried out in compliance with the confidentiality conditions required by measures that are considered necessary for the protection of the essential interests of domestic security and which refer to the production or trade of arms, munitions and war material; b) at the time of the first commercial exploitation or of the registration application, the owner of the topography is an Italian subject or an Italian company or if, being a foreigner, meets the requirements as listed in Article 3 of Chapter 1. 2. The right to obtain registration expires at the end of the fifteenth anniversary of the date of the first topography's fixation or codification, if it is not the object of any commercial exploitation anywhere in the world during the same period. For such purposes, "commercial exploitation" means exploitation not including that made under condition of confidentiality referred to paragraph 1, letter a).

Art.93

Effective date and duration of the protection 1. The exclusive rights referred to in Article 90 arise on the first to occur of the following dates: a) on the date of the first topography's commercial exploitation anywhere in the world; b) on the filing date of the registration application in due manner. 2. The exclusive rights as per paragraph 1 expire ten years after the first to occur of the following dates: a) the end of the calendar year in which the topography was commercially exploited for the first time anywhere in the world; b) the end of the calendar year in which registration application was filed in the due manner. 3. For the purposes of this Article, "commercial exploitation" means the exploitation which does not include exploitation under confidentiality conditions as referred to in Article 92, paragraph 1, letter a).

Art.94
Reservation statement
1. The topography, the semiconductor product and its external wrapping may bear a statement consisting of the following: a) the 'T" sign circled; b) the date on which the topography was first the object of commercial exploitation; c) the name, denomination or initials of the holder of the rights on the topography. 2. Such statement proves the completed topography's registration, the ownership claim on the topography, or the intention to apply for registration within two years from the date of the first commercial exploitation. 3. Such statement may not be reproduced on products for which the registration application has not been filed within two years from the date of the first commercial exploitation anywhere in the world or for which such application has been definitively rejected.

Art.95
Couterfeit
1. The exercise, without the owner's consent, of the following activities, also through a third party, constitutes counterfeit and violation of the exclusive rights on the topographies of semiconductor products: a) reproduction, in any way and by any means, of the topography; b) fixation, by any means, of the topography into a semiconductor product; c) use, importation and holding for commercial purposes as well as the commercialization or distribution of a semiconductor product in which the topography is fixed. 2. Importation, distribution, commercialization or use of counterfeit semiconductor products made without knowing or without having a good reason to believe that the exclusive rights provided for in Article 90 were existent, do not constitute counterfeiting. 3. In the case set forth in paragraph 2, the continuation of the activity undertaken is allowed, within the limits of the agreements already entered into and of the existing stocks, but the holder of the exclusive rights is entitled to a fair consideration, starting from the date when he has adequately informed the purchaser in good faith that the topography has been unlawfully reproduced. Failing the agreement between the parties, in order to determine the manner of payment of the fair consideration calculated based on the market price, the provisions set forth in Section IV in respect of the statutory license shall apply.

Art.96
Compensation for damages and fair remuneration 1. Whoever after the registration of the topography or after receiving a warning from the applicant, if the application has been approved, carries out the activities set forth in Article 95, is liable for damages pursuant to the provisions set forth in Chapter III. 2. Should the activities set forth in paragraph 1 take place between the time of the first act of commercial exploitation of semiconductor products bearing the reservation statement and the registration of the topography, the subject responsible shall pay only a fair remuneration to the registered topography holder. 3. Should the acts set forth in Article 95, letter a) and b) take place after the first commercial exploitation of semiconductor products not bearing the reservation statement, the registered topography holder shall be entitled to a fair remuneration and the counterfeiter shall be entitled to obtain a license at fair conditions in order to continue the exploitation of the topography within the limits of use prior to the registration. Should the registration holder refuse to grant a contractual license, the provisions regulating the grant of a compulsory license pursuant to Section IV shall, if applicable, apply, including those concerning the quantification of the amount of remuneration and its form of payment, in case of opposition. 4. Whoever purchases a semiconductor product without knowing or without having good reasons to believe that the product was protected by a registration is entitled to continue to commercially exploit such product. However, for the activities which took place after learning or having valid reasons to believe that such semiconductor product was protected, the payment of a fair remuneration is due. The successor in title to the purchaser referred to in this paragraph maintains the same rights and obligations. 5. For the purposes of this Article, commercial exploitation means the exploitation not including that made under condition of confidentiality as provided for by Article 92, paragraph 1.

Art. 97
Invalidity of registrations
1. The legal action aimed at obtaining the judicial declaration of invalidity of a topography registration, can be started at any time and by any interested party, should one of the following requirements be omitted, inexistent or absolutely uncertain: a) the requirements for protection set forth in Article 88; b) the holder of the topography is not any of the subjects mentioned in Article 92, paragraph 1, letter b); c) the registration application was not filed in Italy within the time limit provided for in Article 92, paragraph 1, letter a) and in case of topographies whose exploitation started in the two year period before March 18, 1989, the registration application has not been filed before March 18, 1990; d) the date of the first commercial exploitation is not specified in an appropriate written statement; e) the registration application does not meet the necessary requirements.

Section VII
CONFIDENTIAL INFORMATION


Art.98
Scope of protection
1. Business information and technical-industrial expertise, including commercial ones, subject to the owner's legitimate control, are the object of protection as long as: a) they are secret in the sense that they are not, as a whole or in the exact configuration a and combination of their components, generally well-known or easily accessible for experts and operators in the field; b) they have an economic value due to their being secret; c) they are subjected, by the persons who legitimately control them, to measures which may be deemed reasonably adequate to keep them secret. 2. Data relating to tests or other confidential data the elaboration of which involves a significant effort and the submission of which is a precondition for the authorization to introduce on the market chemical, pharmaceutical or agricultural products implying the use of new chemical substances, are also protected.

Art.99
Protection
1. Except for the applicability of the provisions regulating unfair competition, it is forbidden to disclose to third parties or purchase or use the business information and expertise set forth in Article 98. Section VIII
NEW VARIETIES OF PLANTS


Art. 100
Scope of the right
1. A plant grouping within a single botanical taxon of the lowest known rank which, irrespective of the conditions for the granting of the breeder's right being fully met, may be the object of the right on a new plant variety as long as it: a) can be defined based on the characters resulting from a given genotype or combination of genotypes; b) can be distinguished from any other plant grouping based on the expression of at least one of the above mentioned characters, or; c) can be considered as a unit with regard to its suitability for being reproduced in a similar way.

Art. 101
Breeder 1. For the purposes of this code a breeder is: a) the person who bred or discovered and developed a variety; b) the person who is the employer of the aforementioned person or who has commissioned the latter's work; o) the person entitled or the successor in title to the subjects mentioned under letters a) and b).

Art. 102
Requirements 1. The breeder's right shall be granted if the variety is new, distinct, homogeneous and stable.

Art. 103
Novelty 1. A variety shall be deemed to be new if, at the date of filing of the breeders application, the material for the propagation or vegetative multiplication of the plant, or the harvested material of the variety has not been sold or otherwise transferred to others, by, or with the consent of, the breeder, for the purposes of exploitation of the variety: a) on the Italian territory for more than one year from the application filing date; or b) in any other Country for more than four years or, in case of trees or vines, for more than six years.

Art. 104
Distinctiveness 1. A variety shall be deemed to be distinctive if it is clearly distinguishable from any other variety the existence of which is a matter of common knowledge at the time of the filing of the application. 2. In particular, another variety is deemed to be known when: a) in any Country, an application for grant of a breeder's right or the entry in an official registry, has been filed in relation to the same, as long as such application leads to the grant of a breeder's right or to the entry of the said other variety in the official register of varieties, b) It appears in public collections.

Art. 105
Homogeneity 1. A variety is deemed to be homogeneous when it is sufficiently homogeneous in its pertinent characteristics relevant for the purposes of protection, under reservation of the foreseeable variation arising from the particular features relevant to its sexed propagation and to its vegetative multiplication.

Art. 106
Stability 1. A variety shall be deemed to be stable when its pertinent characteristics relevant for the purposes of protection remain unchanged following repeated multiplications or propagations or, in the case of a particular cycle of multiplication or propagation, at the end of each such cycle.

Art. 107
Scope of the breeder's rights 1. The authorization of a breeder is required for the following acts in respect of the reproduction and multiplication material of the protected variety: a) production or reproduction; b) conditioning for the purpose of reproduction or multiplication; c) offering for sale, sale, or any other form of commercialisation; d) export or import; e) detention thereof for any of the purposes mentioned above. 2. A breeder's authorization is required for the acts referred to in paragraph 1 in respect of harvested material, including entire plants and parts of plants, obtained through the unauthorized use of reproduction or multiplication material of the protected variety, unless the breeder has had an opportunity to reasonably exercise his right in relation to the said reproduction or multiplication material. The use is presumed to be unauthorized in the absence of contrary evidence. 3. The provisions of paragraphs 1 and 2 also apply: a) to varieties which are essentially derived from a protected variety, where the protected variety is not itself an essentially derived variety; b) to varieties which are not clearly distinguishable from the protected variety in compliance with the requirement of distinctiveness; c) to varieties the production of which requires the repeated use of the protected variety. 4. For the purposes of paragraph 3, letter a), a variety shall be deemed to be essentially derived from another variety, defined as the initial variety, when: a) it is predominantly derived from the initial variety, or from a variety that, in turn, is predominantly derived from the initial variety, while retaining the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety . b) it is clearly distinguishable from the initial variety and, except for the differences which result from the act of derivation, it conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety. 5. Essentially derived varieties may be obtained, among others, through the selection of a natural or induced mutant, or a somaclonal variant, through the selection of an individual variant between plants of the initial variety, through backcrossing, or transformation through genetic engineering. 6. During the period between the publication of the application and the grant of a patent right, the breeder is entitled to receive a fair consideration from the person who, during such period, has carried out the activities which, once the right has been granted, require the breeder's consent.

Art. 108
Limitations to the breeder's right 1. A breeder's right shall not extend to acts done privately and for non-commercial purposes, acts done for experimental purposes and acts done for the purpose of breeding other varieties, and, except where the provisions of Article 107 paragraph 3 apply, acts referred to in the same Article 107 paragraphs 1 and 2, in respect of such other varieties. 2. Without prejudice to the provisions of Article 107 paragraph 1, whoever intends to proceed to the multiplication, in view of the certification, of material deriving from the varieties covered by the new plant variety patent, shall give advance notice thereof to the holder.

Art. 109
Duration of protection 1. The breeder's right, granted pursuant to this code, lasts twenty years starting from the grant date. For trees and vines, the said right lasts thirty years from the grant thereof. 2. The effects of a patent right run from the date on which the application, to which the descriptive elements are attached, is made accessible to the public. 3. In respect to the persons to whom the application, to which the descriptive elements are attached, has been served by the breeder, the patent rights effects run from the notification date

Art. 110
Moral right 1. The right to be recognized as author of the new plant variety can be enforced by the author himself and, after his death, by the spouse and by the descendants up to the second degree; in their absence or after their death, by the parents and other ascendants and, in their absence or after their death, by the relatives up to the fourth degree.

Art. 111
Economic rights 1. The rights arising from the breeding of new plant varieties, except for the right to be recognized as the author thereof, are disposable and assignable. 2. Should a new plant variety be bred during an employment relationship, Article 64 shall apply.

Art. 112
Invalidity of the right 1. A breeder's right is invalid if it is ascertained that: a) the requirements established in the provisions regulating novelty and distinctiveness were not actually met at the time the breeder's right was granted: b) the requirements established in the provisions regulating homogeneity and stability were not actually met at the time the breeder's right was granted, if the breeder's right was essentially granted on the basis of information and documents provided by the breeder; c) the breeder's right was granted to a person who was not entitled to it, and the person entitled did not avail himself of the right granted to him pursuant to Article 118.

Art.113
Revocation of the right 1. A breeder's right is revoked when it is ascertained that the requirements concerning homogeneity and stability are no longer fulfilled, 2. The right is also revoked if the breeder, after being notified his default by the competent administration: a) does not submit, within the time limit of thirty days, the information, documents or material deemed necessary to verify the maintenance of the variety; b) has failed to pay the fees due for the maintenance of his right; c) does not propose, where the denomination of the variety is deleted subsequent to the grant of the right, another suitable denomination. 3. in the cases provided for in paragraph 2, letters a) and c), the revocation is declared by the Italian patents and trademarks Office upon initiative of the Ministry for Agriculture and Forestry.

Art. 114
Denomination of the variety 1. A variety shall be designated by a denomination destined to be its generic designation. 2. A denomination must enable the variety to be identified. It shall not consist exclusively of figures unless where this is a consolidated practice adopted for designating certain varieties. It must not be liable to being misleading or causing confusion as to its characteristics, value or identity of the variety or the identity of the breeder. In particular, it must differ from any other denomination which designates, in the territory of a Country member of the Union for the protection of the new varieties of plants (UPOV), a pre-existing variety of the same plant species or of a similar species unless such latter variety does no longer exist and its denomination has not acquired any particular importance. 3. The rights previously acquired by third parties are not prejudiced. 4. The denomination must be the same as the one already registered in one of the Countries members of the Union for the protection of the new varieties of plants (UPOV) to designate the same variety. 5. The filed denomination, that meets the requirements set forth in paragraphs 1, 2, 3 and 4, is registered. 6. The filed and registered denomination as well as the relevant modifications are communicated to the competent authorities of the UPOV member Countries. 7. The registered denomination must be used for the variety also after the extinction of the breeder's right, to the extent that, under the provisions of paragraph 3, the previously acquired rights do not prevent such use. 8. It is permitted to associate a trademark, a trade name or a similar indication to the variety denomination, provided that the variety denomination proves, anyway, easily recognizable.

Art. 115
Compulsory licenses and expropriation 1. A breeder's right may be the object of non-exclusive compulsory licences for public interest reasons only. 2. The provisions set forth in Section IV regulating compulsory licences, including those relevant to the determination of the amount and to the payment manner of the compensation in case of opposition apply to the extent they are compatible with the provisions contained in this Section, to compulsory licenses for lack of implementation. 3. Lack, suspension or reduction of the implementation provided for in Article 70 takes place when the holder of a breeder's right or its successor in title, directly or through several licensees, does not place at the users' disposal, in the territory of the Country, the propagation and multiplication material of the protected plant variety in an adequate quantity having regard for the requirements of the national economy. 4. In the same manner as set forth in paragraph 2, special, non-exclusive, compulsory licences may also be granted, irrespectively of the implementation of the object of the breeder's right, at any time, against payment of a fair consideration to the holder of the breeder's right, for the use of protected new plant varieties which can be used for human and cattle feeding, as well as for therapeutic use or for the production of drugs. 5. The licences provided for in paragraphs 1, 2, 3 and 4 are granted upon the favourable opinion of the Ministry for Agriculture and Forestry which states the conditions required for the grant of licenses. 6. The decree granting a licence may provide for the obligation of the holder of the right to place at the licensee's disposal the necessary propagation or multiplication material. 7. The expropriation of a new plant variety takes place after consultation with the Ministry for Agriculture and Forestry.

Art. 116
Cross reference 1. The provisions of Section IV apply to new plant varieties to the extent they are not in conflict with the provisions of this Section.

Chapter III
JUDICIAL PROTECTION OF INDUSTRIAL PROPERTY RIGHTS
Section I
PROCEDURAL RULES

Art. 117
Validity and ownership
1. Registration and patenting do not prevent the bringing of actions concerning the validity and ownership of industrial property rights.

Art. 118
Claim 1. An application for registration or patenting may be filed by anybody entitled thereto pursuant to this code. 2. Should a final judgment ascertain that a person other than the one filing an application is entitled to registration and patenting, then if the industrial property title has not been granted yet and if three months have not elapsed since the final judgment was issued, the said person may: a) take over the application for patent or registration in his own name, thus taking on in all respects the status of applicant; b) file a new application for patent or registration the starting date of which, to the extent that its contents do not exceed the contents of the first application or refer to a subject-matter substantially identical to the subject-matter of the first application, dates back to the filing date or priority date of the initial application , which ceases anyhow to be effective; in case of a trademark, file a new application for registration the starting date of which, provided that the trademark contained therein is substantially identical to the one covered by the first application, dates back to the filing date or priority date of the initial application, which ceases anyhow to be effective; c) obtain that the application be rejected. 3. If the patent has been granted or the registration has been carried out in the name of a person other than the person entitled thereto, the latter may either: a) obtain a judgment ordering the transfer of the patent or of the registration certificate in his own name, as of the registration date; or b) claim the invalidity of the patent or registration granted in the name of the person who was not entitled thereto. 4. The invalidity may be claimed by anybody interested thereto, provided that two years have elapsed from the publication date of the granting of the invention patent, utility patent and new plant variety patent or from the publication date of the granting of the registration of the topography of semiconductor products without the person entitled thereto having availed himself of any of the rights mentioned in paragraph 3. 5. The provision set forth in paragraph 4 does not apply to the registrations of trademark, and designs and models. 6. Subject to any further remedy being applicable, the registration of a business domain name granted in violation of Article 22 or applied for in bad faith can be revoked upon request of the entitled person or transferred to the latter by the registration authority.

Art.119
Authorship
1. The Italian Patents and Trademarks Office does not verify the correctness of the designation of the inventor or author, nor the entitlement of the applicant, except for the verifications provided for by the law or by international conventions. The Italian Patents and Trademarks Office presumes that the applicant is the owner of the registration or patent right and is entitled to enforce it, 2. An incomplete or wrong designation can be rectified only upon request, to which a declaration of consent by the previously designated person and, if the request is not filed by the applicant or holder of the patent or of the registration, also a declaration of consent by the latter must be attached. 3. If a third party files an enforceable judgment with the Italian Patents and Trademarks Office under which the applicant or owner of the patent or of the registration is bound to designate the former as the inventor or author, then the Office shall enter his name in the register and give notice thereof in the Official Bulletin.

Art. 120
Jurisdiction and venue
1. Actions concerning industrial property, titles of which have been granted or are in the process of being granted, must be filed with the Country's judicial authority, regardless of the parties' citizenship, domicile and residence. If the invalidity action is filed when title has not yet been granted, a judgment shall be issued only after the Italian Patents and Trademarks Office has decided upon the application, by examining it with priority over the previously filed applications. 2. The actions mentioned in paragraph 1 must be filed with the judicial Authority of the place where the defendant is resident or domiciled and, if such places are unknown, of the place where the defendant has his habitual abode, except as provided for in paragraph 3. When a defendant has no residence, domicile or abode within the Country's territory, the actions are to be filed with the judicial Authority of the place where the plaintiff is resident or domiciled. If neither the plaintiff nor the defendant have their residence, domicile or abode within the Country's territory, the judicial Authority of Rome shall have jurisdiction over them. 3. The indication of domicile made in the application for registration or patenting and entered in the register shall be regarded as an election of exclusive domicile for the purposes of determining the venue and for the purposes of carrying out any service relating to proceedings before the ordinary judicial or administrative Authorities. The domicile so-elected may be only changed based on a specific request for substitution to be entered in the register by the Italian Patents and Trademarks Office. 4. The jurisdiction over industrial property rights resides with the Courts expressly designated for such purpose by Legislative Decree No. 168 of June 27, 2003. 5. The courts for community trademarks and designs and models pursuant to Article 91 of the EC regulation No. 40/94 and Article 80 of the EC regulation No. 2002/6, are those mentioned in paragraph 4. 6. Actions based on facts allegedly infringing the plaintiff's rights can also be filed with the judicial Authority having a specialized division, in whose district the facts have occurred.

Art. 121
Allocation of the burden of proof 1. The burden of proof of the invalidity or revocation of an industrial property title is, in any case, on the person who challenges the title. Except for the provision of Article 67, the burden to prove a counterfeit is on the holder. Evidence of a trademark revocation due to non-use may be provided by any means, including iuris tantum presumptions. 2. If a party has provided serious evidence supporting the reasonableness of his motions and if he has identified documents, elements or information available to the opposing party confirming such evidence, he can ask the judge to order the opposing party to exhibit them or to ask for the relevant information. The said party can also ask the judge to order the opposing party to submit elements for the identification of the persons involved in the production and distribution of the products or services alleged to infringe the industrial property rights. 2 bis. In case of infringement committed on a commercial scale through piracy acts as per article 114, the judge can also order, on application by a party, the communication of banking, financial or commercial documents under the control of the opposing party. 3. The judge, on issuing the above orders, shall take measures adequate to protect confidential information, after hearing the opposing party. 4. The judge shall infer elements of proof from the answers given by the parties and from the groundless refusal to comply with orders. 5. In matters set forth in this code, a court-appointed expert can receive documents regarding the questions posed by the judge, even though they have not been filed in the proceedings, by disclosing them to all parties. Each party can appoint more than one expert.

Art 121-bis
Right of information
1. The Judicial authority both in provisional actions and in the merits, in response to a justified and proportionate request of the claimant, may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer and/or any other person who: (a) was found in possession of the infringing goods on a commercial scale; was found to be using the infringing services on a commercial scale; (b) was found to be providing on a commercial scale services used in infringing activities; (c) was indicated by the person referred to in point (a), (b) or (c) as being involved in the production, manufacture or distribution of the goods or the provision of the services. 2. The information referred to in paragraph 1 shall, as appropriate, comprise the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, information on the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question. 3. Information is acquired by questioning the persons referred to in paragraph 1. 4. The applicant must provide the specific indication of the persons to be questioned and the facts on which each one should be questioned. 5. The judge, once the questioning is admitted, requires to the persons referred to in paragraph 1 the information indicated by the party involved; he/she can also ask them, by his/her own initiative or upon request of the part involved, all the questions he/she deems useful to clarify the circumstances on which the questioning is taking place. 6. Articles 249, 250, 252, 255 e 257, clause 1, of the code of civil procedure.

Art. 122
Legitimatio ad causam for the invalidity and revocation action
1. Without prejudice to the provisions of Article 188, paragraph 4, an action aimed at obtaining the declaration of revocation or of invalidity of an industrial property title can be brought by anybody interested therein and started ex officio by the public prosecutor. Notwithstanding the provisions of Article 70 of the Code of Civil Procedure, the public prosecutor's intervention is not mandatory. 2. An action aimed at obtaining the declaration of invalidity of a trademark, due to the existence of priority rights or due to the use of the trademark violating third parties' copyright, industrial property right or any other exclusive right or due to the trademark violating the right to the name or portrait, or due to the trademark registration being carried out in the name of somebody not being entitled thereto may be started only by the owner of the priority rights or by his assignee or by the person having title thereto. 3. The action aimed at obtaining a declaration of invalidity of a design or model due to the existence of priority rights as per Article 43, paragraph 1, letters d) and e), due to the registration having been carried out in the name of somebody not entitled thereto, due to the design or model constituting an incorrect utilization of any of the elements listed in Article 6-ter of the Paris Union Convention for the Protection of the industrial Property, text of Stockholm of July 14, 1967, ratified by law No. 424 of April 28, 1976 or of any designs, emblems and escutcheons being particularly interesting from the public point of view in the Country, may only be started by the owner of the priority rights and by his assignee or by the person having title thereto or by anyone interested in the utilization respectively. 4. An action for revocation or invalidity of an industrial property title is brought according to the adversary system, by involving all persons recorded as entitled. 5. Judgments declaring the invalidity or revocation of an industrial property title are entered in the registry by the Italian Patents and Trademarks Office. 6. A copy of the introductory act of any civil proceeding concerning industrial property rights shall be communicated to the Italian Patents and Trademarks Office by the party who starts the proceeding. 7. Failing said communication, the judicial authority, regardless of which is the degree of the proceeding, before deciding on the merits, shall order that such communication be carried out. 8. The clerk of the court shall forward a copy of any judgment concerning industrial property rights to the Italian Patents and Trademarks Office.

Art. 123
Erga omnes effectiveness
1. The revocations or the invalidity, also partial, of an industrial property title are effective erga omnes provided that they are declared by a final judgment.

Art. 124
Corrective measures and civil penalties 1. By a judgement ascertaining the infringement of an industrial property right, an injunction from manufacturing, trading and using the items infringing the relevant right and the definitive removal from the channels of commerce towards who owns them or have them available can be ordered. The injunction and the order of the definitive withdrawal from the market can be ordered also against any intermediate which is part in the proceeding and whose services were used to infringe an industrial property right. 2. When issuing the above injunction, a judge may fix an amount owed for each violation or subsequently ascertained non-compliance, as well as for any delay in obeying the order. 3. By a judgement ascertaining the infringement of an industrial property right, destruction of all the items in infringement can be ordered, unless particular reasons are invoked for not doing so, at the expense of the infringer. The destruction of the item cannot be ordered and the owner of the industrial property right can obtain just the compensation in case the destruction of the item is prejudicial to national economy. If the items infringing an industrial property right can be employed in a legitimate use, after suitable modification, the judge can opt, rather than for a definitive withdrawal or destruction, for their temporary withdrawal from the market, with possible reinsertion thereof following the changes imposed to protect the right; 4. A judgment ascertaining the infringement of industrial property rights may order that items produced, imported or sold in violation of the right, including the specific means univocally devoted to manufacture them or to implement the protected method or manufacturing process, be assigned to the holder of the right, without prejudice to the right to compensation of damages. 5. A judge may also, if requested by the owner of the items or of the manufacturing means mentioned in paragraph 4 and taking into account the residual duration of the industrial property title or the particular circumstances, order the seizure at the infringer's expense, until such time as title, items and manufacturing means expire. In such latter case, the industrial property right holder may ask for the assignment in his favour of the items seized at the price to be fixed by the judge for the enforcement after consulting an expert, if the parties have failed to reach an agreement in that respect. 6. Items infringing industrial property rights shall not be ordered to be removed or destroyed, and the use thereof shall not be forbidden if they belong to someone making personal or household use thereof. In applying the measures, the judicial authority takes into account the need for proportionality between the seriousness of the infringement and the remedies ordered, as well as the interests of third parties. 7. A judge who issues a judgment ordering the above measures shall decide on any challenges arising in the course of the enforcement of the measures mentioned in this Article, by a non-appealable order, after hearing the parties and gathering summary information.

Art. 125

Damage compensation and restitution of profits from the infringer 1. The compensation due to the injured party is settled according to articles 1223, 1226, 1227 of the civil code, taking into account all the appropriate aspects, such as negative economic consequences, including the lost profits, of the injured rightholder, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement. 2. The decision providing for damages compensation can set the damages as a lump sum established on the basis of the acts of the proceedings and on the presumptions deriving thereto. In this case, the lost profits are anyhow established in an amount net lower than that the infringer should have paid if he had obtained the licence from the injured rightholder . 3. In any case, the injured rightholder can ask for the restitution of the profits earned by the infringer as an alternative to compensation for lost profits or in the amount they exceed such compensation.

Art. 126
Publication of a judgment 1. The judicial authority may order the publication of the precautionary order or of the judgment ascertaining the infringement of industrial property rights, whether in full or in the form of a summary or limited to the ruling, in consideration of the seriousness of the facts, in one or more newspapers indicated by such authority, at the losing party's expense.

Art. 127
Criminal and administrative penalties 1. Without prejudice to the application of Articles 473, 474 and 517 of the Criminal Code, whoever manufactures, sells, exhibits, displays, makes industrial use or introduces into the Country items violating a valid industrial property title, pursuant to the rules of the present code, shall be punished, at the opposing party's request, by a fine up to 1,032.91 euros. 1 bis. Whoever refuses, with no good reason, to reply to the judge's question according to article 121-bis or provides the judge with false information, will be sanctioned according to 372 of criminal code, reduced by the half. 2. Whoever affixes any untrue words or indications on any item, so as to suggest that it is protected by a patent, industrial design, model or topography or that the trademark distinguishing it is registered, shall be punished by an administrative penalty in an amount ranging from 51,65 to 516,46 euros. 3. Unless the facts constitute a crime, an administrative penalty up to 2,065.83 euros shall be inflicted, even when no third party has been damaged, on anyone making use of a registered trademark after the registration thereof has been declared invalid, whenever the invalidity results in the unlawfulness of any use of the trademark, or on anyone deleting the trademark of the manufacturer or trader who provided him with the products or goods for commercial purposes.

Art. 128
Description 1. Any industrial property right holder may ask for the description of the items infringing his right as well as of the means used to manufacture them and of the evidences as to the alleged violation and the extent thereof. 2. The request is proposed by a petition to the President of the specialized division of the court having jurisdiction on the case on the merits pursuant to Article 120. 3. The President of the specialized division shall then fix by decree the hearing for the appearances as well as the mandatory time limit for service of the order. 4. After hearing the parties and gathering any summary information, if necessary, the same judge issues a non-appealable order and, if he orders the description, he shall also indicate the necessary measures to be adopted in order to ensure the protection of confidential information and authorizes the possible taking of samples of the objects as per paragraph 1. Whenever summoning the opposing party may prejudice the enforcement of an order, he shall decide on the petition by a decree containing the reason therefor, notwithstanding the provisions of paragraph 3. 5. If a petition has been filed before the beginning of the case on the merits, the order granting the requested measures shall also fix a mandatory time limit, no longer than thirty days, for the starting of the case on the merits. 6. The order becomes ineffective if it is not enforced within the time limit set forth in Article 675 of the code of civil procedure. 7. The provisions of Article 669-undicies of the code of civil procedure also apply to the description.

Art. 129
Seizure 1. Any industrial property right holder may apply for the seizure of some or all of the items infringing his right, as well as of the means used to manufacture them and of the evidences as to the alleged violation. In the latter case, measures adequate to the protection of the confidential data shall be taken. 2. The seizure proceeding is governed by the provisions of the code of civil procedure concerning the precautionary proceedings. 3. Without prejudice to the needs of criminal justice, the items deemed to infringe an industrial property right may not be seized but only described as long as they are displayed within the grounds of an exhibition, whether official or officially recognized, taking place in the territory of the Country or are being moved from, or to, such exhibition.

Art. 130
General provisions 1. The description and the seizure are enforced by a bailiff assisted, if necessary, by one or more experts and supported by technical investigative instruments, whether photographical or of any other nature. 2. Interested persons may be allowed to attend the operations, also through their representatives, and to be assisted by experts they trust. 3. After the time limit provided for in Article 675 of the code of civil procedure has elapsed, description and seizure operations already started may be completed but no further operations may be initiated based on the same order. It is however still possible to ask the judge to issue further orders for description or seizure in the course of the case on the merits. 4. A description and seizure may also regard items belonging to persons not identified in the petition, provided that they be items manufactured, offered, imported, exported or marketed by the party as to whom the said measures have been issued and provided that such objects be not for personal use, 5. Minutes of the seizure and description operations, along with the petition and the judicial order, must be served on the third party owning the described and seized items within fifteen days from the end of the said operations, under penalty of ineffectiveness.

Art. 131
Injunction 1. The holder of an industrial property right can request that an injunction be issued to prevent any imminent infringement of his rights or to forbid the continuation or the repetition of the alleged infringements and in particular, he can request to issue the injunction not to manufacture, market and use the infringing items and the order to remove them from the market against the owner or against who has them available, according to the civil procedure code relating to provisional measures. The injunction and the order to remove from the market can be requested, on the same basis, against any intermediary whose services are being used by a third party to infringe an intellectual property right. 1 bis. If the judge in issuing the provisional measures does not set the term wherein the parties have to start the merits, the latter has to start within 20 working days and 31 calendar days, whichever is the longer. The term starts from the day the measures were decided, if this occurred during a hearing, or otherwise from the day of their communication. 1 ter. if the merits do not start within the mandatory term as per paragraph 1, or if after its starting, it lapses, the provisional measures lose their validity. l quater. The measures as per clause 1-ter do not apply to urgent measures issued according to article 700 of the civil procedure code and to other provisional measures apt to anticipate the effects of merits decision. In these cases, each part can start the merits. 2. By issuing an injunction, the judge may fix an amount due for each infringement and non-compliance subsequently ascertained and for any delay in the compliance with the judicial order.

Art 132
Precautionary protection granted in advance 1. The measures mentioned in Articles 128, 129 and 131 may be issued even while the registration or patenting is still pending, provided that the application for registration or patenting has been made accessible to the public or to the persons on whom such application has been served.

Art. 133
Precautionary protection of domain names 1. The judicial Authority may provisionally order, in addition to the injunction enjoining the use of an unlawfully registered domain name, also the provisional transfer of that name, by making it conditional, if deemed appropriate, on the filing of an adequate bond by the beneficiary of the measure.

Art. 134
Procedural rules 1. The provisions of Chapters I and IV of Title II and the regulations of Title III of Legislative Decree No. 5 of January 17, 2003, shall apply to judicial proceedings relating to industrial property and to unfair competition, except for those which do not even indirectly interfere with the enforcement of industrial property rights, as well as to the torts connected to the exercise of industrial property rights, pursuant to Law No. 287 of October 10, 1990 and to Articles 81 and 82 of the SU Treaty, on which the ordinary judge exercises his cognizance, and in general the matters on which the specialized divisions have jurisdiction, including those connected ; any matters not regulated by the above rules shall be regulated by the provisions of the Code of Civil Procedure, as far as compatible, Article 121, paragraph 5 being in any case applicable. 2. The rules of Articles 35 and 36 of Title V of Legislative Decree No. 5 of January 17, 2003 shall apply to arbitration proceedings on matters mentioned in paragraph 1. 3. All disputes relating to matters mentioned in paragraph 1, including those regulated by Articles 64 and 65 and by Articles 98 and 99, are submitted to the cognizance of the specialized divisions, as set forth in Article 16 of Law No. 273 of December 12, 2002, as supplemented by Article 120. Also, disputes concerning an expropriation indemnity for industrial property rights on which the ordinary judge takes cognizance, are submitted to the jurisdiction of the specialized divisions.

Art. 135
Appeal Committee 1. Appeals to the Appeal Committee may be brought against the Italian Patents and Trademarks Office orders rejecting an application or request in all or in part, denying the recording or preventing the acknowledgement of a right, as well as in the other cases mentioned by this code, if filed within the mandatory time limit of sixty-days from the receipt of the communication of the order. 2. The Appeal Committee, founded by Royal Decree No. 1127 of June 29,1939, consists of a chairman, a deputy chairman and eight members selected among the judges ranking not below the level of counsellors of the court of appeal, after consulting the Superior Council of Judges, or among university professors of juridical subject matters or those employed in the State's high schools. 3. The Committee is divided into two divisions, presided over by the chairman and by the deputy chairman. The chairman, the deputy chairman and the Committee's members are appointed by decree issued by the Minister for Productive Activities and hold their office for two years. Their appointment can be renewed. 4. The committee can be joined in by experts to be selected by the chairman among university professors and professors from high schools and among industrial property attorneys enrolled in their professional association and having a proved experience as court-appointed experts, appointed for the purpose of reporting on single matters submitted to the Committee. The joining experts have no deliberative votes. 5. Officers, whether in office or retired, can be singled out as Committee's members and experts as long as they are officers of the categories indicated. 6. The Appeal Committee is assisted by a secretariat, the members of which are appointed by the same order instituting the Committee or by a separate order. The secretariat members shall be chosen among the officers of the Italian Patents and Trademarks Office and their compensation shall be that established in the current legislative, regulatory or contractual provisions. 7. The Appeal Committee has the function of advisor to the Productive Activities Ministry on the subject matter of industrial property. Such advisory function is performed upon request by the Productive Activities Ministry. The Committee's advisory meetings are not valid if the absolute majority of its members entitled to deliberative votes does not attend. 8. The compensation of the Committee's members, of the members of the secretariat to the Committee and of the Committee's joining experts are determined by a decree issued by the Productive Activities Minister, in agreement with the Finance Minister.

Art. 136
Procedure before the Appeal Committee 1. A petition must be served both on the Italian Patents and Trademarks Office and on the persons having opposing interest to whom the appeal directly refers, within a sixty-day period starting from the date when the opposing parties received the relevant communication or have learned about that or, as to the acts for which individual communication is not required from the date when the time period for publication has elapsed, if publication is prescribed by provisions of law or of regulations, subject to the obligation to effect any further service on other parties as ordered by the Appeal Committee. The petition, along with the evidence of the relevant service, a copy of the order being appealed, if available to the appealer, and the documents which the appealer intends to use during the proceeding, must be filed within thirty days of the latest service, with the offices mentioned in Article 147 or directly sent, by registered mail to the secretariat to the Appeal Committee at the Italian Patents and Trademarks Office. 2. Along with the petition, evidence must be filed relating to the payment of the unified tax prescribed by Article 9 of Presidential Decree No. 115 of May 30, 2002. 3. The original petition must be filed along with as many copies on unstamped paper as there are numbers of the members of the Committee and of the opposing parties, it being understood that the Committee's Chairman may ask the concerned parties for a greater number of copies. 4. Failure to file copy of the appealed order and of the exhibits supporting the petition shall not result in revocation. Within thirty days from the expiration date of the time period allowed for filing the petition, the Italian Patents and Trademarks Office shall exhibit, by including it in the specific file kept by the Committee's secretariat, the appealed order if available along with the judicial exhibits and acts, based on which the order had been issued, with the documents mentioned therein and those deemed by the Office to be useful to the proceeding. 5. The Chairman of the Committee entrusts the petition to the division having jurisdiction thereon. The Chairman or the deputy Chairman appoints a spokesman among the members assigned to the division and, when dealing with technical matters, may also appoint one or more deputy spokesmen, selected among the joining experts. 6. The Chairman, or the spokesman appointed by him, establishes the time limits in any case not exceeding sixty days, by which the briefs and the reply briefs of the opposing parties as well as the related exhibits must be filed. 7. After the time limits set in paragraph 6 have elapsed, the Committee may order such means of proof or evidence as it deems appropriate, specifying how they must be taken. During the evidence phase, the Chairman, or the spokesman appointed by him, can hear the parties for any clarifications. If the means of proof or evidence are not necessary or, in any case, after they have been taken, the Chairman fixes the date for the discussion before the Committee. 8. When deciding on the petitions, the Committee divisions must consist of one Chairman and of two members entitled to deliberative votes. 9. The Committee is entitled to ask the Italian Patent and Trademark Office for further clarifications and exhibits. 10. The petitioner, or his patent attorney if appointed, is entitled to be allowed to set out his arguments orally, as long as he has timely applied therefor, in any case, at least two days prior to the discussion. The petitioner may either appear before the court personally or be assisted by an attorney and also by an expert. The Office may file its appearance brief as opposing Administration through one of its officers. After the meeting is opened, the spokesman reports on the petition. Subsequently, the parties or their patent attorneys, set out their arguments and, if requested by the Committee members, the director of the Italian Patents and Trademarks Office, or an officer of the same department appointed to represent him, provides the necessary information and the requested exhibits. 11. Before the discussion on the petition is over, each interested party may file explanatory briefs to the Committee. If, during the discussion, some new facts arise, liable to affect the decision, they must be communicated to the parties. 12. The Committee may at any time make use of such means of proof as it deems appropriate and, in any case, it may also order the postponement of the decision or of the discussion and schedule it for another meeting. 13. The Committee decides after the parties have left. 14. If the Appeal Committee considers the petition non-receivable or inadmissible, it so declares by a judgment; if it deems the petition to be groundless, it rejects it by a judgment; if it accepts the petition, it invalidates the order in whole or in p

Art. 15. The spokesman, or another member of the Committee, is appointed to draw up the judgment by setting out the grounds underlying the decision. 16. The judgment is served, by registered mail care of the secretariat to the Committee on the person concerned or on his attorney, if appointed, and only the ruling thereof is published in the Official Bulletin, subject to the right of the Committee to order that judgments be published in full in the said Bulletin, when they refer to general matters and when the publication cannot be detrimental. 17. If the petitioner, alleging a serious and irreparable damage arising out of the enforcement of the appealed order or out of the inactive behaviour of the Italian Patents and Trademarks Office during the time required to issue a decision on the petition, applies for the issuance of precautionary measures deemed to be under the circumstances more suitable to temporarily ensure the effects of the decision on the petition, the Appeal Committee takes its decision on the petition by issuing an order in Chambers. Before the application for a precautionary measure is discussed, in a case of such extreme seriousness and urgency as not to allow even the postponement until the date of the Chambers, the petitioner may ask the Chairman of the Appeal Committee, or the division in charge of the appeal, to order provisional precautionary measures, whether at the same time as the application for precautionary measures or by means of a distinct petition served on the opposing parties. The Chairman issues his decision in the form of a decree setting forth the reasons therefor, even in absence of the adversarial party had been started. The decree is effective until the decision of the court sitting as a panel, to which the application for precautionary measures is submitted during the first available Chambers. While deciding on the application for precautionary measures, the Appeal Committee , after ascertaining subsistance of the adversarial system and that the evidence phase have been duly performed and after hearing the appearing parties on the matter at issue, can define the judgment on the merits in compliance with the above paragraphs, provided that the necessary requirements are met. 18. The application for reversal or amendment of the precautionary measures granted and the re-filing of the rejected application for precautionary measures are only admissible if based on supervening facts. 19. If the administration has not complied with the precautionary measures granted or has complied with them only in part, then the concerned party may file a well-grounded petition, duly served on the other parties, asking the Appeal Committee for the suitable enforcement provisions. The Appeal Commission exercises its powers relating to evaluation of the compliance with the final judgment, as per Article 27, paragraph 1, No. 4 of the Unified Text of the laws on the Council of State, approved by royal decree No. 1054 of June 26, 1924, as amended and orders the enforcement of the precautionary order indicating the enforcement manner and, if necessary, the person who shall be in charge thereof.

Art. 137
Enforcement and seizure of industrial property titles 1. Economic rights relating to industrial property rights can be the object of enforcement. 2. The enforcement is regulated by the rules set forth in the code of civil procedure relating to enforcement affecting personal property. 3. The attachment of an industrial property title is carried out by means of an order served on the debtor by a bailiff. The order must include: a) the declaration of attachment of the industrial property title, after mention of the data through which it can be identified; b) the date of the title and of its being declared immediately enforceable; c) the amount for which the enforcement is pursued; d) the creditor's and debtor's surnames, names and elected domicile or residence; e) the bailiff's surname and name. 4. From the date of the service, the debtor takes on the obligations as a judicial receiver with regard to the industrial property title also against possible yields thereof. The yields accrued after the date of the service and arising from the licensing of the industrial property right, shall be added to the sale proceeds, for the purposes of subsequent allocations. 5. Service of the attachment order is governed by the rules set forth in the code of civil procedure for services of summonses. If the person on whom the attachment order is to be served has no domicile or residence in the Country and has not elected any domicile therein, service shall be performed on the Italian Patents and Trademarks Office. In that case, a copy of the order shall be affixed on the Offices Bulletin board and published in the official Bulletin. 6. An attachment order of an industrial property right shall be recorded within eight days from the service, under penalty of ineffectiveness. After the recording the attachment order of the industrial property right and as long as the attachment is effective, subsequently recorded attachments shall be regarded as an objection to the sale price, if served on the petitioning creditor. 7. A sale and assignment of the industrial property rights attached shall be governed by the corresponding rules set forth by the code of civil procedure inasmuch as applicable, subject to the special provisions of this code. 8. An industrial property right may not be sold before at least thirty days have elapsed from its attachment. To the aim of the sale, a twenty-day period must elapse from the order scheduling the date of the sale. For the sale and allocation of the industrial property rights, the judge in charge shall determine the special methods he shall deem suitable on a case by case basis, including ordering the announcement of the sale to the public, also in derogation to the regulations of the code of civil procedure. To this purpose, the judge can order that the announcement be affixed on the Bulletin boards of the Chamber of Commerce and on those of the Italian Patents and Trademarks Office and published in the Industrial Property Rights Bulletin. 9. The minutes of the assignment must contain the data concerning the industrial property right, as results from the relevant titles. 10. A petitioning creditor in the enforcement of industrial property rights, must serve on the creditors, vested with recorded guarantee rights, the attachment order and the judicial order scheduling the date for the sale, at least ten days prior to the sale. Such creditors must file their applications along with the respective evidentiary documents with the clerk's office of the relevant judicial authority within fifteen days after the sale. Whoever is interested may examine those applications and documents. 11. After the fifteen-day period prescribed in paragraph 8, the judge, upon request of either party, schedules the hearing during which he will propose the scale and allocation of the price obtained from the sale and from any income. During the hearing if the parties have not reached any agreement on sharing the income, the judge having ascertained that the provisions of paragraph 8 have been complied with will scale the creditors and assign the proceeds from income, according to the relevant rules set forth in the code of civil procedure for the enforcement affecting personal property. The receivables with overdue interest, whether prospective or conditional, become collectible based on the civil code regulations. 12. An assignee of an industrial property right is entitled to obtain that the recordings of the guarantee rights on the corresponding title be deleted, by filing a copy of the assignment minutes with the Italian Patents and Trademarks Office, as well as the certified receipt for the payment of the awarded price issued by the court's clerk in compliance with the rules governing deletion of recordings. 13. Industrial property rights, even if still pending or being registered, can be the object of seizure. The seizure procedure is governed by the provisions on enforcement set forth in this Article and by the provisions on seizure set forth in the code of civil procedure. 14. Disputes relating to enforcement and seizure of industrial property rights shall be submitted to the judicial authority of the Country having jurisdiction over them pursuant to Article 120.

Art. 138
Recording 1. The following documents must be disclosed to the public by means of recording at the Italian Patent and Trademark Office a) inter-vivos agreements, whether free of charge or for a consideration, transferring some or all of the rights on industrial property titles; b) inter-vivos agreements, whether free of charge or for consideration, which generate, modify or transfer personal or rights of enjoyment of real property, special liens or guarantee rights, pursuant to

Art. 140 regarding the said rights; c) division agreements, settlement or waiver agreements, relating to the rights set forth in paragraphs a) and b); d) minutes of attachment; e) minutes of assignment following the compulsory sale; f) minutes of stay of the sale of some of the attached industrial property rights for the purpose of being returned to the debtor in compliance with the code of civil procedure; g) decrees of expropriation for public use; h) judgments declaring the existence of the documents mentioned in paragraphs a), b) and c), when they have not been previously recorded. Judgments declaring the invalidity, annulment, termination, rescission and the revocation of a recorded deed shall be annotated on margin of the recording of the deed to which they refer. The judicial claims aimed at obtaining judgments mentioned in this Article can also be recorded. In such event, the effects of the judgment recording will date back to the recording date of the judicial requests; i) wills and deeds evidencing that intestate succession has occurred and the relevant judgments; l) judgments on claims on industrial property rights and the related judicial claims; m) judgments ordering the conversion of invalid industrial property titles and the related judicial claims; n) judicial claims aimed at obtaining the judgments mentioned in this Article. In that case, the effects of the recording of the judgment will date back to the recording date of the judicial claim. 2. Recording is subject to the payment of the prescribed duty. 3. In order to obtain recording , an applicant must file a specific recording note in the form of an application, along with a true copy of the public deed or the original or true copy of the certified private deed or any other documents prescribed by Article 195. 4. The Italian Patents and Trademarks Office, after ascertaining the formal correctness of the deeds, will promptly carry out the recording based on the date when the application was filed. 5. The sequence of the recordings is established based on the sequence of the applications filed. 6. Omissions or inaccuracies, provided that they do not result in the overall uncertainty as to the nature of the deed to be recorded or of the industrial property title to which such deed relates do not involve the invalidity of the recording.

Art. 139
Effects of recording 1. Before being recorded, deeds and judgments, except for wills and the other deeds and judgments mentioned in paragraphs d), i) and 1) of Article 138, shall have no effect as to third parties having purchased and lawfully maintained rights on the industrial property title for any reason whatsoever. 2. In case of conflict among several purchasers of the same industrial property right from the same holder, the purchaser who first recorded his title of purchase shall be preferred. 3. The recording of attachment minutes, as long as it is effective, shall suspend the effects of any further recordings of the said deeds and judgments. The effects of such recordings shall cease after the recording of the assignment minutes, provided that it occurs within three months from the assignment date. 4. Wills and deeds evidencing that an intestate succession occurred, as well as the relevant judgments, shall be recorded for the sole purpose of pointing out the continuity of transfers. 5. Deeds transferring totally or partially or modifying the rights relating to an application or to a European patent are opposable to third parties, provided that they have been recorded in the Italian register of European patents.

Art. 140
Guarantee rights 1. Guarantee rights on industrial property titles must be based on monetary receivables. 2. If several guarantee rights concur, their priority is determined by the sequence of recordings. 3. The deletion of recordings of guarantee rights is carried out following the filing of creditor's consent with signature certified, or when the deletion is ordered by a final judgment, or following the rights secured by guarantee being satisfied as a result of enforcement. 4. The payment of the same duties prescribed for recording is required for deletion.

Art. 141
Expropriation 1. Except for the rights on trademarks, industrial property rights, even if patent or registration is still pending, can be expropriated by the State in the interest of the Country's military defence or for other reason of public use. 2. Expropriation can be limited to the right of use for the State's needs, subject to the provisions relating to compulsory licenses to the extent compatible. 3. By the above mentioned expropriation, if carried out in the interest of the Country's military defence and if related to industrial property titles of Italian holders, the expropriating administration shall also be assigned the right to apply for industrial property rights abroad.

Art. 142
Expropriation order 1. An expropriation is ordered by Presidential decree upon proposal by the relevant Minister, in agreement with the Minister for Productive Activities and the Minister of Economy and Finance, after consulting the Cabinet if the order regards the Country's military defence, or the appeal Committee in the other cases. 2. An expropriation decree in the interest of the Country's military defence, if issued before the certificate of patenting or registration is printed, can contain the confidentiality obligation on the subject matter of the industrial property title and the duration thereof. 3. The breach of confidentiality obligations is punished pursuant to Article 262 of the Criminal Code. 4. In an expropriation decree the amount of the indemnity due to the industrial property right's holder is also determined, on the basis of the market value of the invention, after consultation with the Appeal Committee. 5. Exportation decrees based on a public use reason can be appealed from by filing a complaint with the regional administrative court holding jurisdiction over the territory, which shall have exclusive cognizance of the case. The special procedure set forth in Article 23 bis, Law No. 1034 of December 6, 1971 shall apply.

Art. 143
Expropriation indemnity 1. If an expropriated rights holder does not accept the indemnity calculated according to Article 142 and if the expropriating administration and the holder do not reach agreement in that respect, then the indemnity shall be determined by a panel of arbitrators. 2. An appropriate indemnity shall be granted to an inventor or author who proves that he has lost his priority right abroad because of the delay in the Ministry's negative decision on expropriation, in compliance with the regulations on expropriation indemnity. 3. Expropriation decrees must be annotated on the Industrial Property Titles Register care of the Italian Patents and Trademarks Office.

Section II
ANTI-PIRACY MEASURES


Art. 144
Piracy 1. For the purpose of the rules set forth in this section, counterfeiting and misappropriations of industrial property rights owned by third parties constitute piracy, if committed wilfully and systematically.

Art. 144-bis
Attachment of assets 1. When the injured part presents evidence of circumstances that could preclude the fulfilment of damages compensation, the judicial authority could decide for, according to article 671 of the civil procedure code, precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his bank accounts and other assets or other assets until reaching the possible amount of the damage. To this purpose, the judicial authority may order the communication of bank, financial or commercial documents, or appropriate access to the relevant information.

Art. 145
Anti-counterfeiting National Committee 1. The Ministry for Productive Activities has instituted an Anti-counterfeiting National Committee empowered to monitor any signs of the infringements of industrial property rights as well as infringements of intellectual property rights limited to designs and models, and empowered to co-ordinate and study measures aimed at contrasting them, as well as to assist enterprises for the purpose of protection against unfair competitive practices. 2. The manners of composition and functioning of the Committee set forth in paragraph 1, are defined by decree of the Minister for Productive Activities, in agreement with the Ministers of Finance, of Foreign Affairs, of Agricultural and Forestry Policies, of the Interior, of Justice and of the Cultural Heritage, so as to ensure that public and private interests are represented. 3. The functioning of the Committee provided for in paragraph 1 does not involve any burdens for the public finances.

Art. 146
Measures against piracy 1. Whenever informed thereof, the Ministry for Productive Activities shall report the cases of piracy to the public prosecutor having jurisdiction over the territory, so that the same may take the appropriate initiatives. 2. Without prejudice to the repression of crimes and to the enforcement of the relevant national and community regulations as to the competence of the customs authority, the Ministry for Productive Activities, through the Prefect of the relevant province and, limited to the municipal territory, the mayors may order the administrative seizure of counterfeited products even ex officio and, after three months have elapsed, upon prior authorization of the judicial authority as per paragraph 3, dispose of them at the counterfeiter's expense. The right to maintain samples to be used for judicial purposes remains unprejudiced. 3. The president of the specialized division referred to in Article 120, in whose territory the piracy has occurred, holds jurisdiction to authorize the disposal, upon request of the state or municipal administration which ordered the seizure. 4. Opposition against the disposal order pursuant to paragraph 2, is proposed under the terms and conditions set forth in Articles 22 and 23 of law No.689 of November 24, 1981, as amended. The time limit to file opposition runs from the service date of the order or from the date of the publication per abstract, in the Official Gazette of the Italian Republic.

Chapter IV
ACQUISITION AND MAINTENANCE OF INDUSTRIAL PROPERTY RIGHTS AND RELATED PROCEDURES

Section I
APPLICATIONS IN GENERAL

Art. 147
Filing of applications and petitions
1. All applications, requests, deeds, documents and petitions mentioned in this code are filed, with the Italian Patent and Trademarks Office, with the Chambers of Commerce, Industry and Handicraft and with the offices or public bodies established by decree of the Ministry of Productive Activities. The filing formalities, including those to be carried out by other means of communication, are determined by decree of the same Minister. The above-mentioned offices or bodies, issue certificates attesting that the filing has been made upon receipt of the same, and within the following ten days transfer the filed papers and the related certification to the Italian Patents and Trademarks Office, with the formalities set forth in the decree. 2. Offices or bodies enabled to receive the filing of documents must adept all necessary measures to ensure that professional secrecy is complied with. 3.The clerks of the Italian Patents and Trademarks Office, may not either directly or through a third party, apply for, or become assignees of, industrial invention patents, unless two years have elapsed from the termination of their employment.

Art. 148
Receivability and integration of the applications 1. Applications for patents and registration pursuant to Article 147, paragraph 1, shall not be receivable if the applicant is not identifiable or cannot be reached and, in case of trademarks, also when the application does not include the reproduction of the trademark or the list of the products or services. Unreceivability, except as provided in paragraph 3, is declared by the Italian Patents and Trademarks Office. 2. The Italian Patents and Trademarks Office invites applicants to carry out the necessary integrations, subject to a delay in case of late payment, within two months from the communication if it ascertains that: a) to the application for industrial inventions and utility models no document is attached which may be deemed to be a description or part of the description or a drawing therein referred to is lacking, or the application, instead of the description, contains the reference to a prior application of which number, filing date, country in which the filing took place and identification data of the applicant are not indicated; b) the application for a new plant variety does not have as attachments at least a sample of the description with at least a sample of the photographs referred therein ; c) to the application for design and model registration no graphic or photographic reproduction is attached; d) to the application for topographies no document allowing identification thereof is attached; e) documents certifying payment of the prescribed fees within the time limit set forth in Article 226 are not delivered. 3. If an applicant complies with the office's request within the time limit set forth in paragraph 2, or spontaneously provides to the relevant integration, the Office acknowledges as the filing date for all legal purposes, the date of receipt of the requested integration and informs the applicant accordingly. If the applicant does not comply with the request of the office within the time limit set forth in paragraph 2, unless within such time limit, he has expressly renounced the missing part of description or of the drawing referred to in paragraph 2, letter a), the Office declares the unreceivability of the application pursuant to paragraph 1. 4. If an applicant spontaneously complies with the integration set forth in paragraph 2, the Office acknowledges as the filing date for all legal purposes the date of receipt of the integration and informs the applicant accordingly. 5. All applications, requests and petitions referred to in Article 147 along with the attached papers must be drawn up in the Italian language. In respect of the papers drawn up in a language other than Italian, translation must be provided. If the description is submitted in a language other than Italian, the Italian translation must be filed within the term assigned by the Office.

Art. 149
Filing of European patent applications 1. Applications for European patents can be filed before the Italian Patents and Trademarks Office, in accordance with the manner set forth in the implementation regulation. 2. The provisions set forth in Article 198, paragraphs 1 and 2 apply. For the purposes of the application of such provisions, copies of the descriptions and of the claims drawn up in the Italian language, as well as copies of the drawings, if any, must be attached to the application. 3. The Italian Patents and Trademarks Office immediately informs the European Patent Office of the filing of the application.

Art. 150 Transmission of European patent applications 1. Applications for European patents the subject matter of which, in the opinion of the military patent division of the Ministry of Defence, are clearly not susceptible to be bound by secrecy for reasons of military defence, are transmitted by the Italian Patents and Trademarks Office to the European Patent Office without delay and anyhow within six weeks from the filing date thereof. 2. Should the European patent applications be deemed to be withdrawn pursuant to Article 77, paragraph 5 of the European Patent Convention, the applicant, within three months from the receipt of the notice, may ask for the conversion of the application into an Italian patent application for industrial inventions. 3. Without prejudice to the provisions governing protection of the secrecy on inventions concerning the military defence of the Country, the Italian Patent and Trademark Office, if twenty months have not elapsed from the filing date or from the priority date, transmits copy of the conversion request referred to in paragraph 2, to the central services of the other Countries indicated in such request, attaching copy of the European patent application submitted by the applicant.

Art. 151
Filing of international applications 1. Italian individuals and legal entities and those having their domicile or registered offices in Italy may file international applications for the protection of inventions with the Italian Patent and Trademark Office, who acts as the receiving office pursuant to Article 10 of the Patent Cooperation Treaty, ratified by Law No. 260 of May 26, 1978. 2. Applications may be filed with the Italian Patent and Trademark Office according to the provisions of the implementation regulations; the filing date of the application is determined pursuant to Article 11 of the Patent Cooperation Treaty. 3. International applications may also be filed with the European Patent Office, who acts as receiving office, pursuant to Article 151 of the European Patent Convention of October 5, 1973, ratified by Law No. 260 of May 26, 1978, and with the World Industrial Property Organization in Geneva as receiving office, in compliance with the provisions of Article 198, paragraphs 1 and 2.

Art. 152
Requirements of international applications 1. International applications must be in compliance with the provisions of the Patent Cooperation Treaty of June 19, 1970, ratified by law No. 260 of May 26, 1978, and with the relevant implementation regulations. 2. For the mere purposes of Article 198, paragraphs 1 and 2, a copy of the description and of the claims in the Italian language, as well as of the drawings, if any, are attached to the application. 3. The international application and any attached documents, except for those certifying the payment of the tax, must be filed in one original and two copies. Missing copies are prepared by the Italian Patents and Trademarks Office at the applicant's expense.

Art. 153
Secrecy of international applications 1. The Italian Patent and Trademark Office, subject to the applicant's consent, renders the application accessible to the public only after the international publication has taken place or after the communication referred to in Article 20 of the Patent Cooperation Treaty of June 19, 1970, ratified by law No. 260 of May 26, 1978 or the copy referred to in Article 22 of the same Treaty or, anyhow, after twenty months have elapsed from the priority date, has been received by the designated office. 2. The Italian Patents and Trademarks Office may give notice of designation, disclosing the applicant's name, the title of the invention, the filing date and the number of the international application only.

Art. 154
Transmission of international applications 1. The Italian Patents and Trademark Office transmits the international applications to the international Office and to the administration in charge of carrying out the search, within the time limit provided for in Articles 22 and 23 of the implementation regulation of the Patent Cooperation Treaty. 2. If fifteen days before the expiration of the time limit for the transmission of the original of the international application established by Article 22 of the implementation regulations of the Patent Cooperation Treaty the order relating to the secrecy obligation is received from the Ministry of Defence, the Office informs the applicant, warning him to comply with the secrecy obligation. 3. Within ninety days from the communication set forth in paragraph 2, the conversion of an international application into a national application bearing the same date as the international one may be requested; if conversion is not requested, the application is deemed withdrawn.

Art. 155
Filing of international applications for designs and models 1. Italian individuals or legal entities or those having domicile or actual organisation in Italy may file international applications for the protection of designs and models directly at the international office, or before the Italian Patents and Trademarks Office, pursuant to Article 4, paragraph 1 of the Hague Agreement concerning international filing of designs and industrial models of November 6, 1925 as amended, ratified by Law No. 744 of October, 24, 1980, referred to as the "Agreement". 2. The application with the Italian Patents and Trademarks Office may also be sent by registered mail with return receipt requested. 3. The filing date of the application is determined in accordance with Article 6, paragraph 2, of the Agreement. 4. The international application must be in compliance with the provisions of the Agreement and the related implementation regulations as well as with the administrative instructions issued by the international Office, and it must be drawn up in French or in English using the forms prepared by the international Office.

Art. 156
Application for trademark registrations 1. An application for trademark registration must contain: a) identification data of the applicant and also of the attorney, if appointed; b) claim for priority, if any, or claim relating to the date from which the application's effects start running following the grant of the conversion of a prior Community application or an international registration pursuant to the protocol relating to the Madrid Agreement for International Trademark Registrations of June 27, 1989, ratified by Law No. 169 of March 12, 1996; o) reproduction of the trademark; d) list of products or services that the trademark is aimed at distinguishing, grouped in accordance with the classification classes set forth in the Nice Agreement on the International Classification of the Products and Services for the purposes of Trademark Registration, Geneva text, of May 13, 1997, ratified by Law No. 243 of April 27, 1982. 2. If an attorney is appointed, the appointment provided for in Article 201 is attached 226 to the application.

Art. 157
Application for collective trademark registrations 1. In addition to the documents referred to in Article 156, paragraph 1, copy of the regulations referred to in Article 11 must be attached to applications for collective trademark registrations.

Art. 158
Severance of applications for the trademark registrations 1. Each application must concern one trademark only. 2. If an application concerns more than one trademark, the Italian Patents and Trademarks Office shall invite the interested person, fixing a time limit, to restrict the application to one trademark only, subject to the right to file further applications, one for each of the remaining trademarks, the effect of which shall date back to the date of the first application . 3. Each application for registration concerning more than one product or service, can be severed by the applicant into several partial applications, in which the products or the services of the first applications are allocated, in the following instances: a) before the decision of the office regarding a trademark registration ; b) during any opposition procedure against the decision of the office as to the registration of the trademark; c) during any petition procedure against the decision to register the trademark. 4. Partial applications maintain the filing date of the first application and the benefit of the priority right, if applicable. 5. Petitions to the Appeal Committee suspend the time limit fixed by the office.

Art. 159
Application for renewal of trademarks 1. An application for the renewal of a trademark must be filed by the holder or its successor in title. 2. An application, and the attached payment of the fees due, must be filed within the last twelve month period prior to the expiration date of the ten year period. After such period has elapsed, an application for renewal may be filed during the six months following the month of expiration, an additional charge being applied. 3. Should an attorney be appointed, the appointment provided for in Article 201 must be attached to the application. 4. For registered trademarks based on applications for the conversion of a Community trademark application or of a Community trademark, filed pursuant to the EC Council Regulation No. 40/94 of December 20, 1993 on the Community trademark as amended, or based on an application for the conversion of an international registration, filed pursuant to Article 9-quinquies of the Protocol Relevant to the Madrid Agreement for the International Trademark Registration of June 27, 1989, ratified by Law No, 169 of March 12, 1996, the effects of the first registration, for the purposes of the renewal, start running from the filing date of the Community trademark application or from the date of the international registration, respectively. 5. If a prior trademark is owned by more than one person, the renewal application may be filed by one of them, in the interest of all of them. 6. If an application for renewal or the tax paid only refers to one part of the products or services for which a trademark has been registered, the registration is renewed for the products or services concerned only.

Art. 160
Patent applications for inventions and for utility models 1. Applications must contain: a) identification data of the applicant and of the attorney, if appointed; b) indication of the invention or of the model, in the form of a title, that briefly, but precisely describes the characteristics and the purpose thereof. 2. One application may not contain the request for more than one patent, nor for a single patent concerning several inventions or models. 3. The following must be attached to the application: a) description of the invention pursuant to Article 51; b) invention drawings, if possible; c) designation of the inventor; d) if a patent attorney is appointed, the deed of appointment provided for in Article 201; e) in case of priority claim, the relevant documents. 4. The description of an invention or of a model must start by a summary having technical information purposes only, and must end by one or more claims in which it is specifically indicated what the object of the patent is meant to be.

Art. 161
Sole invention and severance of applications 1. Each application must concern one invention only. 2. If an application concerns more than one invention, the Italian Patents and Trademarks Office shall invite the interested person, fixing a time limit, to restrict the application to one invention only, subject to the right to file further applications, one for each of the remaining inventions, which shall date back to the date of the first application. 3. The petition to the appeal Committee suspends the term fixed by the Office.

Art. 162
Microbiological procedures 1. A patent application concerning a microbiological procedure or a product obtained through such procedure will be deemed as described when: a) one culture of the micro-organism has been deposited no later than the date on which the patent application has been filed, at a collection centre for such cultures; b) the application filed contains the relevant information as to the micro-organism's characteristics available to the applicant; c) a patent application is completed with the indication of the name of a certified collection center for cultures where a culture of the micro-organism has been deposited, along with the number and the date of the deposit of such culture, subject to the right of the Italian Patent and Trademarks Office to request a copy of the deposit receipt. 2. Centres recognised for the purpose of obtaining a European patent or an international authority recognized pursuant to a Convention ratified by Italy are deemed to be certified centres. 3. The indication referred to in paragraph 1, letter c), may be communicated within two months from filing of a patent application. The communication of such indication is deemed to be an irrevocable and unconditional consent of the applicant to place the deposited culture at the disposal of any person, who, from the date on which the patent application is accessible to the public, files his requests with the collection centre where the micro-organism has been deposited. 4. A request mentioned in paragraph 3, shall be served on the applicant or on the holder of the patent and the following indications must be attached thereto: a) name and address of the requesting person; b) requesting person's undertaking vis-à-vis the holder of the patent or the patent application , not to render the culture accessible to any third party; c) undertaking to make use of such culture through a qualified expert specifically identified on a name basis exclusively for experimental purposes until the date when the patent application is rejected or withdrawn or the patent has definitively been revoked or declared invalid, specific restitution in favour of the applicant or of the patent holder is no longer possible. 5. The expert designated for such use is jointly and severally liable for any abuses committed by the requesting party.

Art. 163
Application for a complementary protection certificate for drugs and phytosanitary products 1. An application for the certificate must be filed with the Italian Patents and Trademarks Office issuing the basic patent with reference to the authorization to place the product on the market. 2. The Italian Patents and Trademarks Office publishes at least the following data concerning the application for the certificate: a) name and address of the applicant; b) number of the basic patent; c) title of the invention; d) number or date of the authorisation to place the product on the market as well as indication of the product, the identity of which results from the authorisation itself; e) if applicable, number and date of the first authorisation for the placing of the product on the market within the Community.

Art. 164
Application for plant variety industrial right 1. An application for plant variety industrial right must contain: a) identification data of the applicant and of the attorney, if appointed; b) indication in the Italian and Latin languages of the gender and species to which the variety belongs; c) suggested denomination, specifying if it is a code or an invented name; d) name and nationality of the author of the plant variety; e) claim of priority, if any; f) list of the attached documents. 2. The following must be attached to the application: a) description of the plant variety. In case of hybrid variety, upon the breeder's request, the information related to the genealogical components is not placed at the public's disposal by the receiving office; b) photographic reproduction of the plant variety and of its specific characteristics; c) any information and documentation deemed useful for the purpose of the examination of the application, and, in particular, the results of tests in culture already carried out in Italy or abroad. The documentation drawn up in a foreign language is accompanied by a translation into Italian certified by the applicant or by his attorney; d) declaration referred to in Article 165; e) documents certifying any priorities claimed; f) where an attorney is appointed, the appointment provided for in Article 201; g) document proving the payment of the application fee, of the fee for the deed of appointment or for the related self-certification. 3. Documents indicated in paragraph 2, letters b), d), and e) may be filed afterwards, but not later than six months from the filing of the application. The documents specified in paragraph 2, letters c) and g) may be filed afterwards, but not later than the starting date of the variety culture tests. 4. The variety is described so as to clearly highlight in what manner it has been obtained and what the morphologic and physiologic characteristics distinguishing it from other similar and known varieties are. 5. In the description the denomination suggested by the breeder is also indicated. 6. In case of an essentially derived variety as referred to in Article 107, paragraph 4, the initial variety is also indicated. In case of a genetically modified variety, the origin and the nature of the genetic modification are indicated.

Art. 165
Declaration of the breeder 1. A breeder declares that: a) the variety, for which protection is sought, constitutes, as far as he is aware, a new plant variety pursuant to Article 103 and complies with the requirements provided for in such provision; b) he obtained the authorization from the holders of other new plant varieties, if any, which serve for the production of the requested one; c) he undertakes to provide, upon request of the competent bodies of the Ministry for Agriculture and Forestry, referred to with the acronym MIPAF, and within the time limit established thereby, the reproduction or vegetative multiplication material of the variety for the purpose of the allowing examination thereof; d) an application for the protection in other Countries of the same variety has been filed specifying the outcome of such application; e) he waives the trademark which may be used should it be identical to the denomination proposed for the variety.

Art. 166
Application for variety denomination 1. A proposed denomination for a new variety: a) must comply with the guidelines of the board of directors of the plant variety office of the community; b) must not contravene to the law, the public policy and the accepted principles of morality; c) must not include geographical names.

Art. 167
Application for designs and models registrations 1. An application must contain: a) identification data of the applicant and of the attorney if appointed; b) indication of the design or of the model, in the form of a title and possibly the indication of the characteristics of the products claimed. 2. The following must be attached to an application: a) graphic reproduction of the design or of the model, or graphic reproduction of industrial products, the manufacturing of which must be the object of the exclusive right, or a sample of such products when industrial products having fundamentally two dimensions only are concerned; b) description of the design or of the model, to the extent necessary to understand the design or model concerned; c) appointment provided for in Article 201 if an attorney is appointed; d) documents certifying priorities claimed.

Art. 168
Application for registration of topographies 1. Each application must concern only one topography of a semiconductor product and, when indicating the date of the first commercial exploitation, such topography must correspond to the one existing at the mentioned date. 2. The following must be attached to applications: a) documentation allowing the identification of the topography, in compliance with the provisions of the regulation; b) a declaration attesting the date of the first act of commercial exploitation of the topography, should such date be prior to that of the registration application. If the applicant is a person other than the one who made the first act of commercial exploitation, the juridical relationship with the latter must be declared; c) where an attorney is appointed, the appointment provided for in Article 201: d) the designation, if any, of the author or of the authors of the topography. 3. The use of foreign technical terms customary in the specific field is permitted.

Art. 169
Priority claims 1. When priority of a filing is claimed pursuant to Article 4, a copy of the application, the priority of which is claimed, must be attached wherefrom the name of the applicant, the scope of industrial property right and the filing date can be gathered. 2. If a filing has been made by a third party, the applicant must also provide evidence that he is the successor or the successor in title of the first applicant. 3. When separate applications are filed abroad on different dates for various portions of the same trademark, and priority is sought in respect of such portions, separate applications must be filed for each of them, even though they constitute a whole. Where more than one registration or filing of such different portions of the same trademark are claimed, Article 158, paragraphs 1 and 2 applies for the new separate applications. 4. If separate applications were filed on different dates for the various portions of the same invention, the priority right can be claimed through a single application to the extent that there is uniqueness of invention. Should several filings be claimed through a single application and invention uniqueness is not ascertained, Article 161 applies to the new separate applications. 5. Upon issuance of the ministerial decree for the temporary protection of new trademarks affixed on products or materials concerning the performance of a service having been displayed in an exhibition and rights of priority are claimed for such temporary protection, the applicant must attach to the application for registration a certificate of the executive, or managing, committee or of the management office of the exhibition, having the contents provided for in the related regulations. 6. Patenting or registrations are carried out without mentioning priority if the documents set forth in paragraph 1 are not filed within six months from the filing of the application. For inventions or utility models the time limit for filing such documents is sixteen months from the date of the earlier application , the priority of which is claimed, if such term is more favourable to the applicant. 7. Should the priority of a filing made under the applicable international conventions, be rejected, an analogous annotation as to the rejection must be made in the industrial property title. 8. The priority claim in the patent application for a new plant variety is rejected if it is made after the time limit of twelve months from the filing of the first application and if the applicant is not entitled thereto. If priority is rejected, no mention thereof is made in the patent.

Art. 170
Examination of applications 1. The examination of applications, the correctness of which as to form has been recognised, is intended to ascertain the following: a) as to trademarks: if Article 11 may apply when collective trademarks are concerned; if the word, figure or sign may be registered as a trademark pursuant to Articles 7, 8,9,10,12, paragraph 1, letter a), 13, paragraph I and 14, paragraph 1, letters a) and b); and if the conditions under Article 3 are met; b) as to inventions and utility models, if the object of the application is in compliance with that provided for in Articles 45, 50 and 82, except for the validity requirements until such time as the priority search shall be governed by a ministerial decree, unless absence thereof is absolutely obvious on the basis of the declarations and allegations of the applicant or it is certain under the general knowledge angle; c) as to designs and models, that the scope of the application is in compliance with the prescriptions of Article 31; d) as to plant varieties, the validity requirements provided for in section VIII of chapter II of this code as well as the observance of the provisions of Article 114 of the same section. The examination of such requirements is performed by the Ministry for Agriculture and Forestry, which renders a binding opinion, availing itself of the advisory committee established by Article 18 Presidential decree No. 974 of August 12, 1975. The Committee operates in compliance with the procedural provisions set forth in the executive regulation. In order to ascertain if the requirements persist, the Ministry for Agriculture and Forestry may require of the holder or his successor in title the material for reproduction or for multiplication necessary in order to perform the control; e) as to topographies of semiconductor products, if the object of the application is in compliance with that provided for in Article 87, except for the validity requirements until such time as the exam shall have been governed through a ministerial decree. 2. With regard to trademarks relevant to agricultural and raw agroindustrial products using geographical indications, the Office transmits the sample of the trademark as well as any further documentation to the Ministry for Agriculture and Forestry, who renders its opinion within ten days from receipt of the relevant request. 3. If the above mentioned conditions are not met, the Italian Patent and Trademarks Office proceeds pursuant to Article 173, paragraph 7.

Art. 171
Examination of international trademarks 1. The Italian Patents and Trademarks Office examines the international trademarks designating Italy in compliance with the provisions governing national trademarks pursuant to Article 170, paragraph 1, letter a). 2. The Italian Patents and Trademarks Office, if it deems that the trademark cannot be registered in whole or in part, or if opposition has been filed by third parties pursuant to Article 176, proceeds, in accordance with Article 5 of the Madrid Agreement for International Trademark Registrations, Stockholm text of July 14, 1967, ratified by law No. 424 of April 28, 1976 or of the relevant protocol dated June 27, 1989, ratified by law No.169 of March 12, 1996, to issue provisional refusal of the international registration and informs the World Industrial Property Organization thereof. 3. The provisional refusal pursuant to paragraph 2, is issued within one year for international registrations based on the Madrid Agreement for International Trademark Registrations and within eighteen months for those based on the relevant protocol. The terms become effective from the dates respectively indicated in the mentioned international conventions. 4. In case of provisional refusal, the trademark protection is the same as that of a trademark application filed before the Italian Patents and Trademarks Office. 5. Within the mandatory term fixed therefor by the Italian Patent and Trademark Office, the holder of an international registration, the provisional refusal of which has been communicated to the World Industrial Property Organization, may file his observations, or ask for copy of the opposition document based on which the provisional refusal was issued, through an attorney appointed pursuant to Article 20. In such latter case, if the holder of the international registration asks for a copy within the time limit provided for, the Office communicates to the parties the notice provided for in Article 178, paragraph 1, and applies the other provisions governing the opposition procedure set forth in Articles 178 et seq. 6. If, within the time limit provided for in paragraph 5, the holder of the international registration does not file its observations, or does not request copy of the opposition acts pursuant to the prescribed modalities, the Italian Patents and Trademark Office issues the definitive refusal. 7. The Italian Patents and Trademarks Office informs the World Industrial Property Organization of the definitive decisions relevant to international trademarks designating Italy . 8. If a trademark designating Italy in accordance with the Madrid Protocol has been subsequently struck off in whole or in part upon request by the initial industrial property office, its holder may file an application for registration of the same sign with the Italian Patents and Trademarks Office. Such application becomes effective from the international registration date, with the recognised priority, if any, or from the date of the registration of the territorial extension concerning Italy. 9. Applications are filed within the mandatory time limit of three months from the date the international registration was struck off and may concern the products and services included therein, in relation to only Italy. 10. An application is subject to the provisions on national applications in force.

Art. 172
Withdrawal, rectifications, integrations of applications 1. An applicant may at any time withdraw an application while the examination procedure is pending and, as to trademarks, also during the opposition procedure, before the Italian Patents and Trademarks Office has granted the title. 2. The applicant, prior to the Italian Patents and Trademarks Office granting a title or deciding on the merits of an application or of an opposition, or anyhow before the appeal Committee has decided, in case a petition has been filed, , may rectify, as to non substantial profiles, the originally filed application or any other claim related thereto as well as, in respect of an application for an invention patent or utility model, integrate also by new examples, or to restrict the description, the claims or the originally filed drawings and, in case of a trademark application, to limit or to specify the originally listed products or services. 3. An applicant, upon request of the Italian Patents and Trademarks Office, must complete or rectify the documentation where it is necessary for the comprehension of the industrial property right or to better identify the scope of the protection sought. 4. Should ascertainment in accordance with Article 170, paragraph 1, letter d), be necessary, the Ministry for Agriculture and Forestry invites the applicant to file the material for reproduction or multiplication of the variety and in case of hybrid varieties, may ask, where necessary, also the submission of the genealogical components' material. The institutes and the entities designated for the ascertainment issue a receipt for the deposited material. If the material is deposited in an insufficient quantity or is unsuitable as to quality, the institutions and entities above mentioned draw up a special report to be submitted to the Ministry for Agriculture and Forestry. 5. The Ministry for Agriculture and Forestry, acting together with the entities and bodies responsible for testing may, also upon request of the applicant or of third parties, provide for inspections to be made in the field in order for tests to be attended by the interested parties. If deemed necessary, the entities and bodies responsible for testing, invite applicants to attend the fields test. The designed entity or body transmits, upon completion of the tests, a report concerning the results obtained to the Ministry for Agriculture and Forestry; the latter, in case of doubts on such results, may order that the tests be repeated. The Ministry for Agriculture and Forestry, based upon the examination report, draws up the official description of the variety. The Office, having received the official description from the Ministry for Agriculture and Forestry, transmits it to the breeder, granting him a timeframe for submitting observations. 6. The Italian Patents and Trademarks Office shall keep the documentation relevant to the initial application, must provide evidence against the date of receipt of the modifications or integrations and adopt any further precautionary measure deemed appropriate.

Art. 173
Remarks 1. Remarks arising from the examination of the applications and requests must be communicated to the interested party, granting him/her a term to respond of not less than two months from the date of receipt of the communication. 2. Observations of third parties and the remarks arising from the examination of a patent application for new plant variety are communicated to the interested party granting him/her a time limit to respond not exceeding six months. Should the remarks concern the denomination, an integrative declaration is attached to the new submission, including also the declaration referred to in letter e), paragraph 1 of Article 165. The office and the Ministry for Agriculture and Forestry communicate to each other the observations and remarks transmitted to the applicant and the replies received. 3. When because of any irregularities in the appointment pursuant to Article 201, the non-compliance with the remarks results in the rejection of the application and of the connected requests, the remarks must be communicated to the applicant. 4. When the time limit has expired without any reply having been provided in respect to the remarks, an application or request is rejected by a decision to be notified to the holder of the application itself or of the request by registered mail return receipt. Nonetheless, if the remark concerns the claim of a priority right, the lack of reply results exclusively in the loss of such right. 5. A patent application for a new plant variety is rejected: a) in case no reply to the remarks of the office and of the Ministry for Agriculture and Forestry is given within the time limit set; b) in case no materials are delivered for the variety tests in accordance with Article 165, paragraph 1, letter c) unless failure to deliver is due to force majeure; c) in the absence of the requirements provided for in Article 170, paragraph 1, letter d). 6. If a patent application for a new plant variety is not upheld or if it has been withdrawn, the remuneration for the technical controls is reimbursed only if the above mentioned technical controls have not yet been carried out. 7. Before rejecting in whole or in part an application or a request related thereto, due to reasons which have not been addressed by the remarks as per paragraph 1, the Italian Patents and Trademarks Office grants a time limit of two months to the applicant to submit observations. Once such term has expired, if no observations have been submitted or if the Office deems the observations submitted not to be acceptable, the application or the request is rejected in whole or in p

Art. 8. In respect of international patent applications, the Italian Patents and Trademarks Office, having carried out the ascertainment referred to in Article 14 of the Patent Cooperation Treaty of June 19, 1970 ratified by Law No. 260 of May 26, 1978, invites applicants to make the necessary amendments and to file the drawings not included, fixing to this purpose a time limit of no more than three months, without prejudice to the compliance with the term for the transmission of the original copy of the international patent application, provided for in Rule 22 of the regulations for the implementation of the Patent Cooperation Treaty. The Italian Patents and Trademarks Office declares that the application is deemed to be withdrawn in the cases set out in Article 14 of the Patent Cooperation Treaty. 9. Should the application be upheld, the Italian Patents and Trademarks Office grants the title. 10. The files concerning the deeds and documents relevant to the patent or registration applications are kept by the Italian Patents and Trademarks Office for ten years after the expiration of the relevant rights. Following the expiry of such time limit the Office may destroy the files also without asking for the opinion of the State Central Archive, as long as the originals, the applications, the descriptions and the single drawings attached thereto are transposed on non-alterable computer-supports.

Section II
OBSERVATIONS ON TRADEMARKS AND OPPOSITIONS TO TRADEMARK REGISTRATIONS


Art. 174
Observations and oppositions to trademark registration 1. Trademark applications deemed suitable for registration pursuant to Article 170, paragraph 1 letter a), the trademark registrations made in accordance with the procedure set forth in Article 179, paragraph 2, and international trademarks designating Italy, may be object of observations and of oppositions in compliance with the provisions set forth in the Articles reading below.

Art. 175
Filing of observations from third parties 1. Any interested party may, without, for such reason, becoming a party to a registration procedure, address written observations to the Italian Patents and Trademarks Office, specifying the reasons for which a trademark must be excluded ex-officio from the registration procedure within the mandatory time limit of two months: a) from the publication date of a registration application, deemed suitable for registration pursuant to Article 170, paragraph 1, letter a) or deemed suitable for registration on the basis of a final judgment granting the registration; b) from the publication date of a trademark registration, the application for which has not been published pursuant to Article 179, paragraph 2; c) from the first day of the month following that when the publication of the international trademark was made in the Gazette de l'Organization Mondiale de la Propriété Intellectuelle des Marques Internationales. 2. The observations, if deemed pertinent and relevant, are communicated by the Italian Patents and Trademarks Office to the applicant who may submit its own observations within the time limit of thirty days from the date of the communication. 3. In case of international trademarks, observations are only taken into account by the Italian Patents and Trademarks Office for the purposes of the examination referred to in Article 170, paragraph 1, letter a).

Art. 176
Filing of opposition 1. Subjects entitled thereto pursuant to Article 177, may submit to the Italian Patents and Trademarks Office an opposition which, in order to be admissible, must be written, containing the reasons therefor and supported, within the mandatory time limit of three months from the dates specified in Article 175, paragraph 1, letters a), b) and c), against those observations indicated therein. 2. Opposition, which may concern only one application or trademark registration, must contain the following in order to be admissible: a) as to a trademark object of opposition, the identification of the applicant, the number and date of the registration application and the products or services against which the opposition is filed; b) as to the trademark or right of the opponent, the identification of the trademark or of the prior trademarks pursuant to Article 12, paragraph 1, letters d) and e), as well as of the products and services on which the opposition is based or of the right set forth in Article 8; c) the reasons for which opposition is based. 3. The opposition is deemed to have been withdrawn if the payment of the opposition fees within the term and in the manner provided for by the decree referred to under Article 226 is not proven. 4. Whoever submits the opposition must file the following within the mandatory time limit of two months starting from the expiry of the time limit set for the finalisation of a settlement agreement pursuant to Article 178, paragraph 1: a) copy of the application or of the trademark registration certificate on which the opposition is based, to the extent that they are not national applications or certificates and, if applicable, the documentation related to the priority or pre-existence right enjoyed by it as well as the translation thereof into Italian; as to pre-existence, this must have been already claimed in respect of the application or of the community trademark registration; b) any other documentation providing evidence of the alleged facts; c) the documentation necessary to demonstrate the entitlement to submit opposition, should the prior trademark not be in the name of the opponent in the registry held by the Italian Patents and Trademarks Office; d) appointment pursuant to Article 201 if an attorney has been appointed. 5. Through opposition obstacles to trademark registrations pursuant to Article 12, sub-paragraph 1, letters d) and e), can be raised and enforced for all or part of the products or services for which the registration has been applied for, as well as the absence of consent to the registration by the persons entitled pursuant to Article 8.

Art. 177
Entitlement to opposition 1. The following are entitled to bring opposition: a) an owner of a trademark already registered in the Country or effective in the Country from a prior date; b) a subject having filed in the Country an application for trademark registration having a prior date or being effective in the Country from a prior date due to a priority right or to a valid claim of pre-existence; c) the licensee of the exclusive use of the trademark; d) the persons, the bodies and the associations listed in Article 8.

Art. 178
Examination of opposition and decisions 1. Upon expiration of the time limit provided for in Article 176, paragraph 1, the Italian Patents and Trademarks Office, after verifying that opposition is admissible and suitable of being continued pursuant to Articles 148, paragraph 1 and 176, paragraph 2, within two months from the expiry date of the time limit for the payment of the fees pursuant to Article 225, notifies the opposition to the applicant, also giving notice to the opponent, that they have the right to reach a settlement agreement within two months from the date of the notice, subject to postponement upon joint request of the parties. 2. Failing an agreement pursuant to paragraph 1, an applicant who has received the documentation set forth in Article 176, paragraph 2, letters a), b) and o), may file his written observations within the term fixed by the Office to this purpose. 3. During the opposition proceedings, the Italian Patents and Trademarks Office may at any time invite the parties to file within a time limit granted further documents, remarks or observations in respect of the allegations, remarks and observations of the other parties. 4. Upon the applicants request, the opponent being the owner of an earlier trademark having been registered for at least 5 years provides documents suitable to prove that such trademark has been actually used by him or with his consent, for the products and the services for which the trademark has been registered and based on which the opposition is grounded, or that the lack of use is due to legitimate reasons. Failing such evidence, to be provided within thirty days from the notice of the request by the Italian Patents and Trademarks Office, the opposition is rejected. If the actual use is proved for only part of the products or services for which the earlier trademark was registered, the latter, for the sole purpose of the examination of the opposition, is considered registered for that part of products or services only. 5. A petitioner's request to obtain evidence of the actual use of the trademark must be submitted not later than the date of presentation of the first observations pursuant to paragraph 2. 6. In case of oppositions concerning the same trademark, oppositions subsequent to the first one are incorporated into the former. 7. At the end of the opposition proceedings, the Italian Patents and Trademarks Office upholds such opposition and rejects the application for registration, in whole or in part, if it turns out that the trademark should not be registered for all or only for a part of the products or services indicated in the application; otherwise, it rejects the opposition. In case of international registration, the Italian Patents and Trademarks Office issues a final refusal, partial or total, or rejects the opposition giving communication to the World Industrial Property Organization.

Art. 179
Scope of protection 1. If an applicant wishes to extend the trademark protection to foreign countries pursuant to the Madrid Agreement for International Trademark Registration, Stockholm text of July 14, 1967, ratified by Law No. 424 of April 28, 1976, the Italian Patents and Trademarks Office, even if an opposition has already been filed, proceeds with the registration and carries out the relative annotations. 2. If the trademark application, set forth in paragraph 1, has not yet been published, the registration publication is accompanied, in such event, by the notice that such publication is the starting time limit for the opposition. The granting of the opposition causes the partial or total strike-off of the trademark.

Art.180
Stay of the opposition procedure 1. An opposition procedure is stayed: a) during the time limit granted to the parties for the purpose of reaching a settlement agreement pursuant to Article 178, paragraph 1; b) if opposition is based on a trademark application, until the registration of such trademark; c) if opposition is based on an international trademark, until the expiry of the time limits for the refusal or the filing of opposition against the registration of such trademark registration or the relative examination or opposition procedures have been completed; d) if the opposition is proposed against a national trademark subject to re-examination following the remarks pursuant to

Art. 175 paragraph 2, until the end of the relevant re-examination procedure; e) if a proceeding for invalidity or revocation of the trademark is pending, on which opposition is based or which is relevant to the ownership of the right to registration pursuant to Article 118, until the judgement becomes final, if the applicant files an appropriate request. 2. Upon the applicant's request, the stay pursuant to paragraph 1 letter e), may be subsequently revoked. 3. If the opposition is stayed pursuant to paragraph 1, letters e) and d), the Italian Patents and Trademarks Office examines the trademark application or the international trademark registration first.

Art. 181
Extinction of the opposition procedure 1. The opposition procedure is extinguished if: a) the trademark on which the opposition is based has been declared invalid or has been revoked through a final judgement; b) the parties have reached the agreement referred to in Article 178, paragraph 1; c) the opposition is withdrawn; d) the application, being the subject matter of the opposition, is withdrawn or rejected through a definitive judgment; e) whoever filed the opposition ceased to be entitled thereto pursuant to Article 177.

Art. 182
Petition 1. The decision through which the Italian Patents and Trademarks Office declares the opposition as non admissible or rejects it, is communicated to the parties, who, within thirty days from the date of notice, may file a petition before the appeal Committee, pursuant to Article 135.

Art. 183
Appointment of the examiners 1. The oppositions are decided by officers appointed for a period of two years by decree of the General Director among those being in the managing or directive roles of the Italian Patents and Trademarks Office holding a degree in law. 2. The appointment as deciding examiner, pursuant to paragraph 1, renewable and paid with compensation to be established by decree of the Minister of the Productive Activities in agreement with the Ministry of Economy and Finances, is reserved to those who, being in possession of the requirements as per paragraph 1, attended proficiently appropriate training courses to be organized by the Italian Patents and Trademarks Office. 3. If the number of the officers appointed pursuant to paragraphs 1 and 2 is inadequate for the filed oppositions, also officers selected among the Ministry of the Productive Activities staff, meeting equal requirements and having equal professional qualifications, may be appointed, or experts having well-known knowledge in the field. 4. The overall number of officers designated for the examination of oppositions may not exceed thirty members.

Art. 184
Coming into force of the opposition procedure 1. The provisions governing the opposition procedure shall come into force through the subsequent decree of the Minister of the Productive Activities who establishes the manners of application.

Section III
PUBLICITY


Art. 185
Collection of industrial property titles 1. Original industrial property titles must be signed by the Director of the competent office or by an officer delegated by him. 2. The industrial property titles, marked by a progressive number, according to the date of granting, include: a) date and number of application ; b) surname, first name, domicile of the owner and, in case of plant varieties, of the breeder, business or corporate name and registered office, for legal entities; c) surname of the attorney, first name, domicile, if appointed; d) surname and first name of the author; e) essential data of the claimed priority; f) in case of plant varieties, the gender or the species to which the new plant variety belongs and the related denomination. 3. Originals of the industrial property titles are gathered in registers. 4. A certified copy of the industrial property title is transmitted to the owner. In case of patents for plant varieties, the Office gives notice of the grant thereof to MIPAF.

Art. 186
Consultations and publications 1. The collection of industrial property titles and the collection of applications may be examined by the public upon request subject to prior authorization of the Italian Patents and Trademarks Office. 2. The Italian Patents and Trademarks Office, starting from the time limits set for the access to the applications by the public, holds at the public's disposal patent or registration applications for review. The public may also examine, in the same manner, descriptions and drawings related to industrial property titles and attachments to the applications in which the priority of previous filings is claimed. 3. The Italian Patents and Trademarks Office may permit that copies be made of the applications, descriptions and drawings as well as of other documents for which review by the public is allowed, to anybody applying, subject to such precautions as deemed necessary to avoid any damage or deterioration of the document placed at the publics disposal. 4. Copies for which the authenticity certification of the specimen placed at the public's disposal is requested, must be in compliance with stamp duty. The Ministry of the Productive Activities may nevertheless establish that copying or, anyhow, reproduction also through photographic reproduction, of the deeds and the documents above mentioned, is exclusively dealt with by the Office, upon payment of the relevant office fees. 5. Copies of excerpts of industrial property titles and of the certificates concerning information to be taken from the relevant documentation, as well as the duplicates of the originals, are made exclusively by the Italian Patents and Trademarks Office following a request where the filing number of the title for which copy or excerpt is sought, is specified. 6. The certification of authenticity of the copies is subject to stamp duty and to office fees to be paid to the Italian Patents and Trademark Office for each sheet and for each drawing. 7. The amount of the fees provided for in this code is fixed by decree of the Ministry of the Productive Activities in agreement with the Ministry of Economy and Finances. The fees for the copying and for the photographic reproduction made by the Italian Patents and Trademarks Office are likewise determined. 8. Industrial property titles, divided by classes, and their recordings, are published, at least monthly, in the Official Bulletin provided for each kind of titles in Articles 187, 188, 189 and 190. The publication shall include the fundamental data contained in each title and in the application for recording respectively. The Bulletin may also include both the analytical indexes of the industrial property rights and the alphabetical indexes of the owners and also summaries of the description may also be included therein. 9. The Bulletin may be distributed free of charge to the Chambers of Commerce, as well as to the entities indicated in a list drawn up by the Ministry of the Productive Activities.

Art 187
The Trademarks Official Bulletin 1. The trademarks official bulletin, to be published at least monthly by the Italian Patents and Trademarks Office, includes at least information relevant to the following: a) applications deemed registrable pursuant to Article 170, paragraph 1, letter a) with the indication of the possible priority; b) applications consequent to the requests for transformation of Community trademark with the indication of the filing date of the related application; c) registrations; d) registrations along with the notice pursuant to Article 179, paragraph 2; e) renewals; f) applications for recording of deeds provided for in this code and the recordings carried out. 2. The identification data of the applications and of the registrations, in addition to the specification indicated under paragraph 1, letters a), b) and d) and from the related numbers and dates, are those indicated by Article 156. 3. The Official Bulletin contains analytical indexes, ordered at least alphabetically as concerns owners, numerically and by classes.

Art. 188
The new plant varieties Official Bulletin 1. The communication to the public provided for by Article 30 of the International Convention for the protection of new plant varieties (UPOV), Geneva text of March 19, 1991, ratified by law of March 23, 1998, No.110 is made by means of the publication of a "New plant varieties Official Bulletin" published by the Office. 2. The Bulletin is published at least every six months and contains: a) the list of the patent applications, divided by species, indicating, in addition to the number and the filing date of the application, the name and the address of the applicant, and the name of the author if other than the applicant, the proposed denomination and a short description of the plant variety, the protection of which is sought; b) the list of the granted patents, by genus and species, indicating the number and the filing date of the correspondent application, the name and address of the owner and the final variety denomination; c) any other information of public interest. 3. The Bulletin is circulated free of charge, among the competent offices of the other countries members of the Union pour la protection des obtentions végétales (U. P. O .V).

Art. 189
The Official Bulletin for invention patents and utility models, registrations of designs and models, and topographies of semiconductor products . 1. The Official Bulletin for invention patents and utility models, registrations of design and models, and topographies of semiconductor products, to be published at least monthly by the Italian Patents and Trademarks Office, contains at least the following information relevant to: a) application for patents or registration with the indication of the possible priority or request for the postponement of public access; b) granted patents or registration; c) patents and registration revoked because of the non payment of the fees provided for the yearly maintenance; d) patents and registration licensed to the public; e) patents and registration subject to expropriation decree or to compulsory licence; f) patents or registration subject to conversion; g) applications for recording of the deeds set forth in Article 138 and recordings implemented. 2. The identification data of applications, patents and registrations, in addition to those specifically indicated in paragraph 1 letters a) d) e) and related numbers and dates, are those set forth in Articles 160, paragraph 1, 167, paragraph 1, 168, paragraphs 1 and 2, letters b) and d). 3. The Official Bulletin contains analytical indexes, at least in alphabetical order as for owners as well as indexes by number and by classes.

Art. 190
Official Bulletin for the complementary certificates for medicines and products related to phytosanitary products 1. The Official Bulletin for applications and complementary certificates for medicines and for phytosanitary products, to be published at least monthly by the Italian Patents and Trademarks Office, includes at least the information provided for in Article 11 of EC regulations No. 1768/92 of June 18, 1992 and No. 1610/96 of July 23, 1996.

Section IV
TIME LIMITS


Art. 191
Expiry of time limits 1. The time limits provided for in the present code are liable of being extended upon request filed to the Italian Patents and Trademarks Office prior to their expiry date, unless the term is indicated as being not extendable. 2. Upon request containing the reasons therefor, the postponement may be granted up to a maximum of six months from the expiration date or from the communication by means of which the Italian Patent and Trademark Office fixed the term.

Art. 192
Continuation of the procedure 1. When the applicant or the owner of an industrial property right has not observed a time limit fixed by the Italian Patents and Trademarks Office, in relation to a procedure before such Office, which results in the rejection of the application or the petition or the revocation of a right, the procedure is continued upon request of the applicant or of the owner, to which evidence of the occurred observance of the requirements within the previously expired time limit is attached. 2. The request must be filed within two months from the disregarded term. 3. The provision set forth in this Article is not applicable to the time limits concerning the opposition procedure.

Art. 193
Restoration 1. The Applicant or the owner of an industrial property title who, although he has used the diligence required in the circumstances, does not comply with a time limit established by the Italian Patents and Trademarks Office or the appeal Committee, is restored his rights if the impediment has, as its direct consequence, the rejection of the application or of the petition related to it, or the revocation of the title of industrial property or the loss of any other right including the right to appeal. 2. Within two months from the date the impediment ceased, the omitted deed must be carried out and the petition for restoration indicating the facts and the justifications along with the appropriate documentation must be filed. The request cannot be received after one year has elapsed from the expiry date of the non-observed time limit. In case of failure to pay the maintenance or renewal fees, such period of one year starts from the expiry date of the time limit within which the payment of the fee can be made. In this case the receipt proving payment of the fee owed along with the penalty fee must be attached. 3. Prior to the rejection of petition, an applicant or owner of the industrial property right may, within the term fixed by the Office, file his own allegations or observations. 4. The provisions set forth in this Article are not applicable to the time limits mentioned in paragraph 2, to the time limit granted for the severance of applications for patent and registration as well as for the filing of the severance application and for the filing of deeds concerning opposition to trademarks registration. 5. If an applicant for patent or registration, although he has used the diligence required in the circumstances, has not been able to comply with the time limit for claiming the priority right, he is restored his right if the priority is claimed within two months from the expiry date of such time limit. This provision also applies if the time limit filing for the priority document is not complied with. 6. Whoever, in good faith, has made serious and effective preliminary activity or has stated to use the object of third parties' industrial property rights during the period between the loss of the exclusivity or of the right to acquire it and the restoration as per paragraph 1, may: a) in case of inventions, utility models, designs or models, new plant varieties or topographies for semiconductor products, implement them free of charge within the limits of the prior-use or as it results from the preliminary activity; b) in case of trademarks, request to be reimbursed of the expenses borne.

Chapter V
SPECIAL PROCEDURES

Art. 194
Expropriation procedure 1. Expropriation decrees are transmitted in copy to the Italian Patents and Trademarks Office and served in the form provided for the service of civil judicial acts to the parties concerned. Once the service has been done, the rights which are the object of expropriation are transferred on to the expropriating administration which has the full right to use them. The administration acquires also the obligation to pay the fees, if any, required for maintaining the industrial property right in force. Unless publication may bring prejudice, in the case of expropriation decrees and of those which modify or revoke the prior decrees, the Italian Patents and Trademarks Office gives notice thereof in the Official Bulletin and makes the annotation on the title or on the application. 2. In a decree of expropriation of only the use of the industrial property right, the duration of the period for which the use is expropriated must be indicated. Should only the use of the industrial property right be expropriated, the patenting and registration process as well as the publication of the relevant titles are made in accordance with the standard procedure. 3. For the sole purposes of determining the indemnity to be paid against expropriation in the absence of an agreement concerning the amount thereof, a panel of arbitrators is appointed composed of three members, appointed one by each party and the third one by the first two members or, in case of disagreement, by the President of the specialized division of the Rome Court. The arbitrators shall be chosen among those having acquired professional standing and experience in the field of industrial property. The provisions of Article 806 et segg. of the code of civil procedure apply, if compatible. 4. The panel of arbitrators must proceed by fair evaluation taking into account the loss of the competitive advantage which results from the expropriated patent. 5. Arbitrage costs, professional fees due to the arbitrators and expenses and fees of defence are liquidated in the award, in which it is also determined who, and in what measure, has to bear such burden. The burden is anyhow on the expropriated party if the indemnity is liquidated in an amount lower than the one initially offered by the administration. 6. The arbitrators award may be appealed before the Specialised Section of the Rome Court which quantifies the indemnity. The term for the appeal is of sixty days from the date when the quantification of the indemnity is communicated to the parties.

Art. 195
Applications for recording
1. Applications for recording shall be prepared in two originals, one of which is returned to the applicant together with the declaration of recording, in accordance with the requirements set forth in the decree of the Ministry of Productive Activities. 2. The application must contain: a) surname, name and domicile of the beneficiary of the recording sought as well as of the attorney, if appointed; b) surname and name of the owner of the industrial property right; c) the nature of the deed or the grounds which justify the recording; d) the list of industrial property rights object of the recording sought; e) in case of change of ownership, the name of the Country of which the new applicant or the new owner is a citizen; the name of the Country in which the new applicant or the new owner has domicile or the name of the Country in which the new applicant or the new owner has a real and effective industrial establishment.

Art. 196
Recording procedure
1. The following must be attached to applications for recording referred to in paragraph 2: a) copy of the deed from which the change of ownership results or of the deed which modifies, constitutes or extinguishes the personal or real rights of enjoyment or of guarantee referred to in paragraph 1, letter a) or copy of the minutes and decisions referred to in paragraph 1, letter b), complying with the provisions concerning the registration tax if applicable, or an extract of the deed or in case of a merger a certification issued by the Companies Register or by other competent authority, or in case of an assignment, a declaration of assignment or of effected assignment signed by the assignor and the assignee, including a list of the rights object of the assignment; or in case of a waiver, a written declaration of waiver signed by the owner. The Italian Patents and Trademarks Office may require that the copy of the deed or of the extract be certified as conforming to the original by a public official or by any other competent public authority; b) a document proving the payment of the prescribed rights. 2. A single application is sufficient when the recording concerns several industrial property rights both at the application stage or granted to the same person, on condition that the beneficiary of the change in ownership or of the rights of enjoyment, of guarantee or of the deed to be recorded be the same for all titles and that the numbers of all applications and of all titles at issue be indicated in application itself 3. When an attorney is appointed, the appointment must also be enclosed pursuant to Article 201. 4. In the register, the following must be indicated for each recording: a) the date of filing of the application, which is the date of the recording; b) the surname, name and domicile of the successor in title, or the name and registered office, if referred to a company or to an entity, as well as the surname, name and domicile of the attorney, if appointed; c) the nature of the rights to which the recording refers. 5. Documents and decisions submitted for recording are kept at the Italian Patents and Trademarks Office. 6. Requests for deletion of recordings must be made in the same forms and in the same manners set for the recording applications. Deletions shall be recorded by entries at the margins. 7. Whenever, in order to record the guarantee rights, it is necessary to convert the amount of the credit into the national currency, such conversion shall be made on the basis of the exchange rate of the day when the guarantee was granted.

Art. 197
Entries
1. An applicant or his attorney, if appointed, must, in each application, indicate or elect his domicile in the Country for all communications and notices to be made in accordance with this code. 2. Changes of the name or the domicile of the owner of the industrial property right or of his attorney, if appointed, shall be brought to the attention of the Office for the entry in the registry pursuant to Article 185. 3. Entry applications concerning change of name or address shall be submitted in a single counterpart in accordance with the provisions contained in the implementation regulation. 4. One application is sufficient when the amendment concerns several industrial property rights both at the application stage or when granted. 5. The provisions of paragraphs 1, 2 and 3 apply to the change of name or address of the attorney referred to in Article 201. 6. The judgements declaring the nullity or the revocation of industrial property titles received by the Italian Patents and Trademarks Office, must be entered in the registry and notice thereof must be given in the Official Bulletin.



Art. 198
Procedures of military secrecy
1. Parties residing in the territory of the State may not, without the authorization of the Ministry for Productive Activities, file exclusively with the offices of foreign Countries or with the European Patent Office or with the International office of the World Industrial Property Organisation as receiving office, their applications for the grant of patents for invention, utility model or topography nor file them with such offices before ninety days from the date of filing in Italy have elapsed, or from the date of filing of the authorization application. The above Ministry decides on the authorization applications, upon permission of the Ministry of Defence. Once the ninety days time limit has run without a refusal decision, the authorization is deemed granted. 2. Unless the fact constitutes a more serious crime, the violation of the provisions of paragraph 1 is punished by a monetary sanction of not less than 77.47 Euros or by imprisonment. If the violation is committed when authorisation has been denied, imprisonment of not less than one year applies. 3. The Italian Patents and Trademarks Office makes the patent applications for inventions, utility models and for semiconductor topographies received, immediately available to the military patent service of the Ministry of Defence. 4. Should the above mentioned service believe that the applications concern inventions or utility models useful for national defence, officers or personnel who are not part of the section itself also may, upon appropriate delegation by the Ministry of Defence, review the descriptions and drawings attached to the applications at the Office. 5. All persons who review applications and documents relevant to patents or who have been made aware of them because of their position, are bound by obligation of secrecy. 6. During ninety days following the filing of applications, the Ministry of Defence may ask the Patents and Trademarks Office for the postponement of the grant of the industrial property title as well as of any related publication. The Office gives notice to the party concerned in respect of the request, warning him to observe the obligation of secrecy. 7. If, within eight months from the filing of the application, the competent Ministry has not given notice that it wants to proceed with expropriation to the Office and to the applicant, if the latter indicated his domicile in the State, the ordinary procedure for the grant of the industrial property title shall be followed. In the same time limit, the Ministry of Defence may ask that the grant of the industrial property title as well as any related publication, be further postponed for a period not exceeding three years from the filing of the application. In such event, the inventor or his successor in title are entitled to an indemnification, which is determined in accordance with the provisions concerning expropriation. 8. As far as utility models are concerned, a further postponement as that set forth in paragraph 7 may be asked for a period not exceeding one year from the filing of the application . 9. At the request of foreign Countries who apply reciprocity, the Ministry of Defence may ask for the postponement for a period even exceeding three years, of the grant of the patent as well as of any publication relevant to the invention for patent applications already filed abroad and there subjected to secrecy obligations. 10. Any indemnity due shall be borne by the requesting foreign Country. 11. An invention must be kept secret following the communication of the request for postponement and for the duration of the postponement itself, as well as during the expropriation procedure and after the relevant order, should this provide for the secrecy obligation. 12. An invention must also be kept secret in the case provided for in paragraph 6, after giving notice to the person concerned of the intention to proceed with the expropriation under imposition of secrecy. 13. Secrecy obligations cease if the Ministry of Defence so allows. 14. Violations of secrecy are punished pursuant to Article 262 of the Criminal Code. 15. The Ministry of Defence may ask that patent applications for inventions submitted by controlled or monitored entities be kept secret. 16. If, for inventions concerning the military defence of the Country, the Ministry of Defence requests or, in the case of postponement indicated in paragraph 6, allows the grant of the patent, the relevant procedure takes place under secrecy, upon request of the Ministry. In this case, no publication is made nor are the reviews under this code permitted. 17. In case of exhibitions to take place in the territory of the Country, the Ministry of Defence has the right, through its officials or officers, to proceed to a detailed examination of the items and of the findings delivered for the exhibition, which may be useful for the military defence of the Country and also has the right to obtain information and request clarifications in respect of the objects and the findings. 18. Entities organising exhibitions must deliver to the above mentioned officials or officers the full lists of the items to be displayed which refer to industrial inventions not protected in accordance with this code. 19. The officials and the officers mentioned in paragraph 17, may impose to the entity itself the prohibition of displaying those items which are deemed to be useful in relation to the military defence of the Country . 20. The Ministry of Defence must inform the office of the president of the exhibition and the interested parties by registered mail with confirmation of receipt requested of the prohibition from display warning them in respect to the secrecy obligation. The office of the president of the exhibition must retain the items subject of the prohibition from display under secrecy obligation in respect to their nature. 21. Should the prohibition from exhibiting be imposed after the items have been displayed, the items must be immediately withdrawn, without, however, imposition of the secrecy obligation. 22. The Ministry of Defence has in all cases the right, in respect of the items deemed useful for the military defence of the Country, to proceed to expropriate the rights arising from the invention in accordance with the expropriation rules contained in this code. 23. Should the prohibition from exhibition not be observed, the persons responsible for the unlawful exhibition are punished by monetary sanction of 25.00 to 13,000.00 Euros.

Art.199
Compulsory licenses procedure 1. Whoever wants to obtain a compulsory license pursuant to Articles 70 and 71 of Chapter II, Section IV, for the non-exclusive use of industrial invention or utility model must file application setting for the grounds to the Italian Patents and Trademarks Office, specifying the amount and the manners of payment of the compensation offered. The Office gives immediate notice of the application by registered mail with return receipt, to the owner of the patent and to those who have acquired rights on the patent on the basis of recorded or annotated deeds. 2. Within sixty days from receipt of the registered mail, the owner of the patent and all those who are entitled thereto in accordance with recorded or annotated deeds can oppose the acceptance of the application or declare not to accept the amount and the manners of payment of the compensation. The opposition must set forth the grounds. 3. In case of opposition, within forty-five days of the expiry of the term for the submission thereof, the Italian Patents and Trademarks Office calls for a mediation attempt the applicant, the owner of the patent and all those who have rights in accordance with recorded or annotated deeds. The notice of call is sent to the above mentioned parties by registered mail with return receipt requested or through other means, also electronic, provided that such manners guarantee a sufficient degree of certainty against the receipt of the communication. 4. In the call notice the Italian Patents and Trademarks Office must communicate and transmit copy of the oppositions submitted to the applicant. 5. An applicant may submit counter-observations in writing to the Italian Patents and Trademarks Office by the fifth day prior to the meeting. 6. In the forty-five days following the date of the meeting for the settlement attempt, the Ministry of the Productive Activities grants the license or rejects the petition. 7. The time limit for the conclusion of the proceedings is one hundred and eighty days from the filing of the application.

Art. 200
Procedure for voluntary licenses on active principles
1. An application for a voluntary license on active principles, to which the receipt proving payment of fees in the amount set forth in the decree of the Ministry for Productive Activities mentioned in Article 226 is attached, must contain the following information: a) name or denomination and domicile or registered office of the applicant for the voluntary license; b) name of the active principle; c) details of the protection, number of the patent and of the complementary protection certificate; d) indication of the Italian pharmaceuticals laboratory, duly authorised by the Health Ministry pursuant to the law, where the active principle is to be produced. 2. The applicant must send the application, with English translation attached, complete with the data listed in paragraph 8, by registered mail with return receipt or by other means which guarantee the receipt of the communication, to the Italian Patents and Trademarks Office (UIBM). 3. UIBM gives prompt notice of the petition to the interested parties and to those who have acquired rights on the patent or on the complementary protection certificate based on recorded or annotated deeds by registered mail with return receipt or through other means which guarantee the receipt of the communication. 4. If, within ninety days from the receipt of the application, which can be extended by agreement of the parties, an agreement is reached on the basis of a reasonable royalty, copy of the said agreement shall be transmitted in a similar manner to the Ministry for Productive Activities - UIBM. If, during the subsequent thirty days the Office does not communicate observations to the parties, the voluntary license agreement is considered to be finalised. 5. If the parties inform the UIBM that it was not possible to reach an agreement, the Office commences the mediation procedure described in paragraph 15. 6. The Ministry for Productive Activities, appoints, by its decree, a commission having the task of evaluating the applications for voluntary licenses for which an agreement was not reached between the parties. 7. The commission is composed of five members and five alternates of which: a) two representatives of the Ministry of Productive Activities; b) one representative of the Ministry of Health; c) one representative of the Italian pharmaceutical agency; d) one representative of CCP holders, upon proposal of the more significant category associations; e) one representative of the pharmaceutical active principle producers, upon proposal of the most significant category associations. 8. The commission referred to in paragraph 14, within thirty days from the communication received from the UIBM, as to the absence of agreement between the parties, proceeds to call them, in order to find grounds to reach an agreement aimed at meeting the requirements of the parties, in any event assuring a fair remuneration to the subject granting the voluntary license, by indicating a reasonable royalty, based on criteria which take into account the requirements of international competition among producers of active principles. 9. If, notwithstanding the mediation by the Ministry, a license agreement is not concluded, the Ministry for Productive Activities, should it recognize the legal grounds therefor, orders the transmission of the file to the Antitrust Authority.

VI
PROFESSIONAL REGULATIONS


Art 201
Representation
1. No one is required to be represented by an attorney qualified in procedures before the Italian Patents and Trademarks Office; individuals or legal entities can operate through one of their employees, even if not qualified, or by an employee of another related company pursuant to Article 205, paragraph 3. 2. The appointment of one or more attorneys, if not set forth in the application , or by separate deeds, authentic or authenticated, may be done through a letter of appointment, subject to the payment of the prescribed duty. 3. The deed or the letter of appointment may refer to one or more applications or to professional representation in general for any procedure before the Italian Patents and Trademarks Office as well as before the appeal Commission, except for the jurisdictional procedures. In this case, in any subsequent application, petition or request the attorney shall refer to the letter of appointment or the power of attorney. 4. Appointments may be granted only to attorneys registered in a list maintained by the Board of the Professional Association of the IP consultants. 5. Appointments may also be granted to EU citizens holding professional qualifications equivalent to that of the qualified patents or trademarks patent agents registered in the list of the Italian IP consultants, officially recognised in the EU member State where they have their professional domicile, on condition that the attorney, in his professional activity, only uses the professional title as used in the Country where he resides, expressed in the original language, and that the representation activity of the clients be provided exclusively on a temporary basis. The attorney shall send documentation, proving his qualification in his member State, to the Office and to the Board of the Professional Association, which shall control the conditions for exercising the activity of professional representation set out in this Article. 6. Appointments can also be granted to attorneys registered in their professional bar.

Art. 202
List of consultants 1. Without prejudice to the provisions of Article 201, individuals or legal entities may be represented in proceedings before the Italian Patents and Trademarks Office as well as before the appeal Committee, only by qualified consultants registered in an appropriate list kept by the Board of the Professional Bar and entitled List of Professional IP Consultants as well as by those who are registered as attorneys. 2. The list consists of two sections named, respectively, patent section and trademark section, the former dedicated to consultants for patents, utility models, designs and models, new plant varieties and semiconductors topographies and the latter to consultants qualified in respect of designs and models, trademarks and other distinctive signs and geographical indications. 3. The persons registered in the list constitute the professional Association of the IP consultants. 4. The monitoring of the profession practice is exercised by the Ministry for Productive Activities, through the Italian Patents and Trademarks Office.

Art. 203
Registration requirements 1. Any individual can be registered in the list of IP consultants, if: a) he enjoys civil rights in his national jurisdiction and is of good moral and civil conduct; b) he is an Italian citizen or a citizen of EU member States or a citizen of any foreign Country in respect of which reciprocity applies; c) he is resident or has professional domicile in Italy or in the European Union if he is a citizen of a EU member State, there is no requirement of residence in Italy; the requirement of Italian residence does not apply if he is a citizen of a non-EU Country which permits Italian citizens to register in the corresponding lists without the residence requirement; d) he has passed the qualification exam referred to in Article 207 or otherwise has passed the aptitude test provided for the IP Consultants referred to in paragraph 2 of Article 6 of the Legislative Decree No. 115 of January 27, 1992. 2. Registration is made by the Board of the Association upon filing of an application to which the documents proving the possession of the requirements indicated in paragraph 1or including the auto certification provided for by the law are attached. Registration is communicated without delay by the Board to the Italian Patents and Trademarks Office. 3. Persons indicated in paragraph 5 of Article 201 who temporarily perform the representation activity are automatically considered registered in the list of IP Consultants for the purpose of exercising the rights and of complying with the obligations provided for by the professional regulations, to the extent compatible, but they do not take part in the meetings of those registered in the list and cannot be elected as members of the Board of the professional association. 4. Persons indicated in paragraph 3 residing or having their professional domicile in a Country member of the European Union must elect domicile in Italy pursuant to Article 120, paragraph 3 of this code.

Art. 204
Professional title for the activity
1. The title of industrial property consultant is reserved to the persons registered in the list of authorised consultants. The persons registered in the patent section only must use the title of patent consultant and the persons registered in the trademark section only must use the title of trademark consultant. The persons registered in both sections can use the title of industrial property consultant without any further specification. 2. Persons indicated in Article 202 carry out for and on behalf of individuals or legal entities, all activities provided for in the regulations for services relating to patents for inventions, utility models, designs and models, new plant varieties and topographies for semi-conductor products and trademarks, or relating to the subject matter of trademarks, designs and models and geographical indications, respectively, depending on the sections in which they are registered. 3. Furthermore, upon appointment and in representation of the interested parties, they may carry out any other function which is similar, connected or consequent to the matters provided for in paragraph 2. 4. If several qualified consultants are appointed, they, except as otherwise provided, may also operate separately. If appointment is granted to several qualified consultants who are part of a company or an association, the appointment is considered to be granted to each of them as long as he operates within such company or association.

Art. 205
Incompatibility
1. Registration in the list of qualified industrial property consultants as well as the excercise of the profession of industrial property consultant, are incompatible with any employment relationship or public or private positions except for employment relationship or of positions maintained with companies, offices or services specialized in the subject matter, either autonomous or organised within organizations or companies and of the teaching activity in whatever form exercised; with the exercise of any commercial activity, the professions of notary, professional journalist, stock broker or tax collector.
2. Registration in the list of qualified industrial property consultants as well as the exercise of the profession of industrial property consultant, are compatible, if not otherwise provided and without prejudice to paragraph 1, with the registration in other professional associations and the exercise of the related profession. 3. Qualified industrial property consultants carrying out their activity within offices or organized services in organizations or companies, or consortiums or groups of companies may operate exclusively for and on behalf of:
a) the organization or the company which employs them;
b) companies which are parties to a consortium or the groups in the organization of which they are stably inserted;
c) companies or individuals who work in a stable cooperation relationship with organizations or companies or groups or consortiums in which the qualified consultant is included according to a stable collaboration relationship, including those of research, production or technological exchanges.


Art. 206
Obligation to keep the professional secret
1. An Industrial property consultant has the duty to keep the professional secret and Article 200 of the Code of Criminal Procedure applies to them.

Art. 207
Qualification exam
1. Qualification is obtained by passing an exam sustained before a commission composed, for each session by:
a) the director of the Italian Patents and Trademarks Office or by a person delegated acting as its president;
b) a member of the appeal commission designated by the president thereof as vice president;
c) two university professors respectively of technical and legal matters designated by the Ministry for Productive Activities;
d) four industrial property consultants designated by the Board referred to in Article 215, two of whom selected among the employees of companies or organizations, and two indipendent professionals;
e) alternate members who may replace those indicate in letters b), c) and d), should they be unable to attend.
2. Any person meeting the following requirements shall be admitted to the qualification exams if:
a) he has obtained:
1) university degree or equivalent degree in any foreign country;
2) a diploma or a certificate issued by a EU member State including the certification that the candidate has successfully attended a cycle of post-secondary studies of a minimum duration of three years or the equivalent part-time duration in a university or in a higher education institute or another institute of the same level of training on condition that the course attended has a technical-professional content relevant to the activity as industrial property consultant in respect of patents and models or with regard to trademarks, designs and models in accordance with the qualification sought;
b) he has carried out at least two years of effective professional training documented as appropriate within companies, offices or services specialized in industrial property. 3. Any person having passed the qualification exam as qualified consultant at the EPO shall be admitted to the qualification exam to be registered in the patent section. 4. The training period is limited to eighteen months if the candidate to the qualification exam demonstrates that he has profitably attended a qualified training course for consultants qualified in respect of patents or trademarks, depending upon the qualification sought.
5. The qualification exam for registration in the patent or trademark sections, respectively, consists in written and oral tests aiming at ascertaining the technical-practical knowledge of the candidate in the specific field of industrial property rights, as well as in the field of technical, legal and linguistic culture with regard to the section concerned pursuant to the manners set forth in the regulation to be issued by decree.
6. The qualification exam for registration in the patent section or for registration in the trademark section shall take place every two years upon decree of the Ministry for Productive Activities.

Art. 208
Exemption from the qualification exam
1. Employees of the Ministry for Productive Activities who have served at least five years with managerial functions at the Italian Patents and Trademarks Office are exempted from taking the qualification exam. 2. Italian citizens who have served for at least five years as examiners at the European Patent Office are also exempted from taking the qualification exam.

Art. 209
List of qualified industrial property consultants
1. The list established and kept in accordance with Article 202 shall contain, for each registered person, his surname, name, place and date of birth, academic qualification, date of registration, professional domicile or professional domiciles or the registered office of the company or organization he works for, 2. The registration date determines seniority. Those who after cancellation are registered again have the seniority deriving from the first registration, minus the duration of the period of interruption.

Art. 210
Cancellation from the list and suspension operating by law
1. A qualified consultant is cancelled from the list:
a) when one of the requirements for the registration referred to in Article 203 has ceased to be in effect; b) when one of the cases of incompatibility listed in Article 205 occurs; c) upon application made by the consultant . 2. A qualified consultant may apply to be registered again when the causes for the cancellation have ended without any new exam being required. 3. A qualified consultant is declared suspended by operation of law from practising the profession from the date when he is subject to the restrictive or interdictory measures set forth by chapters II and III of Chapter IV, title I, of the Code of Criminal Procedure until such measures are revoked, as well as in case of non-payment within the fixed term of the annual fee, until the date of the ascertained payment and to disbarment in case of conduct which seriously compromises the reputation and professional dignity.

Art. 211
Disciplinary sanctions 1. Qualified consultants are subject to censure in case of abuses or non material violations, to suspension for not more than two years in case of serious abuses

Art. 212
Meeting of the consultants registered in the List 1. The meeting is called by the president upon resolution of the Board of the Association. It is validly held on first call with the presence of at least half of the persons registered and on second call, which shall not take place on the same day scheduled for the first, with the presence of at least one sixth of the persons registered provided that the persons attending and represented total at least one fifth of the registered persons. It resolves by absolute majority of votes. 2. Any qualified consultant registered in the list may be represented by another registered consultant, by written delegation. One participant may not represent more than five registered persons. 3. Calling and running criteria of meetings are set forth in a decree of the Ministry for Productive Activities.

Art. 213
Tasks of the consultants meeting
1. The meeting is held at least once a year within the month of March, for the approval of the budget and of the balance sheet, in order to establish the annual fee, which must be equal for all persons registered and, where necessary, for the election of the Board of the professional association in which case the call must be made at least one month prior to its expiration date. 2, The meeting of consultants is also held each time the Board of the professional association deems it necessary, as well as when a written request is formulated with the indication of the agenda by at least one tenth of the persons registered in the list.

Art. 214
Meeting of consultants for the election of the Board of the Professional Association 1. The Board members referred to in Article 215 are elected by simple majority of secret votes validly cast through ballots containing a number of names not greater than one half plus one of the members to be elected. The ten candidates who receive the highest number of votes are elected. Votes being equal the candidate more senior in registration date is preferred and, among those who have the same seniority of office, the eldest. 2. Either category of the consultants who practice as independent professionals, both individually and within companies, offices or autonomous services, on one side, and of the consultants who practice in offices and services specialised within organizations or enterprises as referred to in Article 205, paragraph 3, on the other side, may not be represented in the Board by more than eight members. Likewise, each section of the list may be represented in the Board by more than seven members registered on an exclusive basis.
3. Participations and votes by delegates are not permitted. Voting by mail is permitted. 4. Criteria underlying voting, counting and proclamation of the persons elected are established by decree of the Ministry for Productive Activities.

Art. 215
Board of the Association of industrial property consultants
1. The Association of Industrial Property Consultants is governed by a Board which remains in office for three years and is composed of ten members with at least three years of seniority, elected by the assembly. Board members who cease to be in office prior to the expiration for any reason whatsoever, shall be replaced by candidates from the list of those who obtained the highest number of votes, after those elected, subject to the provisions of Article 214, paragraph 2. 2. Renewal having not occurred promptly, the Board continues to operate until the election of a new Board. 3. The Board validly meets with the presence of the majority of its members and resolves with absolute majority of votes. In case of equal number of votes, the vote of the President shall prevail. As far as the disciplinary matters are concerned, the Board resolves with the presence of at least three quarters of its members.

Art. 216
Functions of the President of the Board of the Professional Association
1. The Board appoints among its components a president who is the representative thereof, and adopts the necessary decisions in urgent cases, subject to ratification by the Board upon the first subsequent meeting and exercises the remaining powers granted him by the present code. 2. The President can delegate secretarial or treasury functions to members of the Board. 3. The Board also appoints among its members a vice president who stands in for the president in his absence or impediment, or upon his delegation for single operations.

Art. 217
Functions of the Board of the Professional Association
1. The Board:
a) promptly fulfils the tasks relating to the registrations, suspensions and cancellations to be carried out in the List while immediately notifying the Italian Patents and Trademark Office thereof
b) monitors the protection of the professional title of industrial property consultants and submits the initiatives necessary to this end to the consultants;
c) intervenes, upon request made by the parties, to settle disputes arisen among the members registered in the List with regard to the practice of the profession;
d) proposes modifications and updating of the professional fees;
e) upon request of a client or of the consultant himself, expresses an opinion as to the amount of fees due to an industrial property consultant for the services rendered in the exercise of his profession;
f) adopts disciplinary measures;
g) designates the four qualified industrial property consultants who are part of the examination commission referred to in Article 207;
h) adopts the most appropriate initiatives to achieve the betterment and the improvement of the persons registered for the carrying out of their professional activity;
i) establishes its registered office and provides for the resources necessary to its running;
l) collects in and administers the annual fees of the members;
m) draws upthe budget and the balance sheet in respect of financial year;
n) receives the applications for the qualification exam referred to in Article 207 and verifies that requirements meet admission conditions;
o) maintains the relationships and cooperates with the organizations and institutions which operate in the industrial property sector or which carry out activities having pertinence with it, formulating, where necessary, proposals or opinions;
p) carries out other tasks defined by decree of the Ministry for Productive Activities that be in support of those provided for by the present code.

Art. 218
Termination of the office of member of the Board of the Professional Association, dissolution and failure to constitute the Board 1. The members who, without grounded reasons, do not attend for three consecutive times the meetings of the Board are declared by the latter out of office. 2. The Board can be dissolved by the Ministry for Productive Activities, if it is not capable of functioning and in any event if more than four of the original members cease or are terminated, or should serious irregularities be ascertained. 3. Should the Board be dissolved, its functions are exercised by a commissioner appointed by the Ministry for Productive Activities. The Commissioner provides, within 60 days, to arrange for new elections to take place, for the implementation of which the meeting must be held not prior to thirty days and not more than sixty days from the date of the notice of call.

Art. 219
Meetings of the Board of the professional association 1. The Board is summoned by the president at least once every six months or when he deems it appropriate, or upon request formulated by the majority of its components. Resolutions of the Board are recorded in minutes prepared by a member appointed as secretary at the beginning of each session.

Art. 220
Disciplinary proceedings
1. When notice is received regarding facts which may lead to the application of one of the disciplinary sanctions listed in Article 211, the president appoints three members of the Board and a reporter. 2. The Board, after objecting the facts to the interested party, to be made at least ten days prior to his being heard, having examined briefs and documents if any, resolves by majority of the attending members; should the votes be equal, the most favourable decision for the objected party shall prevail. 3. If the interested party does not appear or does not file any defensive brief, the procedure continues in his absence unless a legitimate impediment is proven. 4. A decision must contain the indication of the facts, the grounds and the succinct exposition of the decision, 5. Members of the Board must abstain from participating when the facts referred to in Article 51, paragraph 1, of the Code of Civil Procedure exist, to the extent applicable, and may be recused for the same reasons through applications filed with the secretary of the Board prior to discussion. 6. In every other case where serious convenience reasons apply, the members can ask the president of the Board the authorization to abstain. 7. The Appeal Commission decides upon the recusation.

Art.221
Appeal against decisions of the Board of the professional association 1. Appeals can be proposed before the Appeal Commission against all the decisions made by the Board. 2. The Director of the Italian Patents and Trademarks Office ensures the regularity of the activity and the functioning of the Board and can appeal, for any irregularity ascertained, to the Appeal Commission within thirty days from the communication of the resolution. Appeals do not have a suspending effect.

Art. 222
Professional tariff
1. The Ministry for Productive Activities approves by its decree the modifications and the updating of professional tariffs proposed by the Board pursuant to Article 217, paragraph 1, letter d).
2. Carrying out of activities relating to the professional organization does not involve additional charges on the State's accounts.

Chapter VII MANAGEMENT OF SERVICES AND RIGHTS

Art. 223
Tasks
1. The Italian Patents and Trademarks Office provides for the services concerning the matter regulated by the present code.
2. Subject to the institutional competence of the Ministry of Foreign Affairs with regard to industrial property, and to the coordination activity of the Prime Minister, the Italian Patent and Trademark Office of the Ministry for Productive Activities promotes and maintains relations with institutions and the EU community and international organizations, as well as with national offices for the industrial property of the other Countries, and takes care of dealing with the relevant issues ensuring the participation within the organisations and the working groups.
3. The Italian Patents and Trademark Office also handles the following further tasks:
a) creation and management of the database and diffusion of the patent information with particular reference to the evolution of the state of the art;
b) promotion of the technical and legal education of the personnel of the public administration operating in the field of industrial property and of technological innovation and of those who carry out or intend to carry out the profession of industrial property consultant ;
c) promotion of the culture and of the use of industrial property among potential users, in particular, among small and medium sized enterprises and underdeveloped areas; d) carrying out of studies, research, surveys and publications related to the subject matter of industrial property and development of patent indicators for the competitive analysis of Italy, by itself or in cooperation with public administrations, research institutes, associations, international organizations;
e) rendering of non institutional services and charching them, upon request of private parties, on condition that such services are compatible with the function and the institutional role attributed to it.
4. The Italian Patents and Trademarks Office can enter into agreements with regions, Chambers of Commerce, industry, Artisan crafts and agriculture, public and private institutions aimed at the carrying out of tasks.


Art. 224
Financial Resources
1. The Italian Patents and Trademarks Office performs its tasks and finances the prior art search with the financial resources registered in the forecast accounts of the Ministry of Productive Activities, and with the compensation collected for services rendered in respect of industrial property. 2. The Ministry of Productive Activities annually corresponds fifty per cent of the amount of the taxes indicated in paragraph 1 to the European Patent Office as provided for by Article 30 of the Monaco Convention of October 5, 1973, ratified by law No.260 of 1978. 3. The Italian Patents and Trademarks Office carries out its tasks also by means of the payments and reimbursements, if any, from international organizations of industrial property to which Italy participates and with every other proceed from its activity.

Art. 225
Grant and maintenance fees
1. For applications filed with the Ministry of Productive Activities in order to obtain the industrial property titles, for the grant, oppositions, recordings and renewals, payment of the stamp duty is due, as well as of the tax for governmental grants as well as of the fees, the determination of which in respect of each title or application and of the time to which they refer is effected through appropriate decree issued by the Ministry of Productive Activities in agreement with the Ministry of Economy and Finances. 2. The individual tax for the designation of Italy in the application for international registration of a trademark, in the successive designation or in the application for renewal applicable to international foreign trademarks which seek protection on the Italian territory through the World Intellectual Property Organization in Geneva, pursuant to the Madrid Protocol Concerning the International Registration of Trademarks of June 27, 1989, ratified by law No. 169 of March 12, 1996, is fixed in the amount of ninety percent of the fees provided for the filing of the grant of a national trademark or its renewal.

Art. 226
Payment terms and manner
1. The payment of fees and taxes of governmental grants provided for herein are made in the terms and in the manner set by decree of the Ministry of Productive Activities

Art. 227
Fees for maintenance of the industrial property titles
1. All fees provided for the maintenance in force of industrial property titles must be paid in advance within the month corresponding to the one in which the application was filed, once the period covered by the prior payment has elapsed. 2. Once such time limit has run, the payment may be made in the subsequent six months with the application of a payment penalty, the amount of which is determined for each industrial property right, by the Ministry of Productive Activities in agreement with the Ministry of Economy and Finances. 3. Several annual fees can be paid in advance. 4. In the case provided for in Article 6, paragraph 1, all the parties are jointly obliged to pay the maintenance fees.

Art. 228
Exemption and suspension from payment of fees
1. The Ministry of Productive Activities may grant to an inventor who proves to be in conditions of poverty, the exemption from payment of the grant fees and the suspension from payment of the annual fees for the first five years. Upon expiry of the fifth year the inventor who intends to maintain the patent in force must pay, in addition to the annual fee for the sixth year, also the prior fees. Failing such payment, the patent terminates and the inventor shall not have to pay the fees for the prior years.

Art. 229
Reimbursable fees
1. Should the application be denied or waived before the registration has been effected or the patent has been granted, the fees paid are reimbursed, except for the application fee. The filing fee for opposition is reimbursed should the opposition be extinguished pursuant to Article 181, paragraph 1, letter b). 2. The reimbursements of fees are authorised by the Ministry of Productive Activities. The authorisation is issued as a matter of course when the fees to be reimbursed refer to an application for registration or for a patent which has been finally rejected or to an appeal upheld. In every other case, reimbursement is made upon request of the person entitled, by petition to the Ministry of Productive Activities. 3. Reimbursements must be registered in the patent register and, if they refer to applications withdrawn or rejected, they are recorded on the applications register.

Art. 230
Incomplete or irregular payment
1. If for an evident mistake, or on other excusable grounds, a fee is paid incompletely or irregularly, the Italian Patents and Trademarks Office pursuant to Article 223 may accept as valid a delayed integration or regularization of the payment. 2. If an annual fee is concerned, the Italian Patents and Trademarks Office provides only upon request of the interested party. If the request is rejected, the applicant can appeal to the Appeals Commission by and within the mandatory term of thirty days from the date of communication. 3. Delay in the payment exceeding six months involves the revocation of the industrial property right.

Chapter VIII
FINAL AND TRANSITIONAL PROVISIONS


Section I
TRADEMARKS

Art. 231
Earlier applications
1. Applications for trademark registration and applications for recording filed prior to the entry into force of Legislative Decree No. 480 of December 4, 1992 are dealt with in accordance with the provisions contained therein. However, as far as their formal regularity is concerned, they are subject to the pre-existing regulations.

Art. 232
Limitations on the exclusive right of well-known trademarks v 1. The right to make exclusive use of a trademark registered prior to the date of entry into force of Legislative Decree No. 480 of December 4, 1992 and which is well-known, does not give to the owner the right to oppose to the further use in the commerce of a sign identical or similar to the trademark for products or services not similar to those for which it has been registered.

Art. 233
Invalidity
1. The trademarks registered prior to the date of entry into force of Legislative Decree No. 480 of December 4, 1992 are subject, as far as the causes for invalidity are concerned, to prior laws.
2. The invalidity of a trademark cannot be declared if, prior to filing the principal claim or the counterclaim of invalidity, the sign, because of the use which has been made of the same, has acquired a distinctive character.
3. The invalidity of a trademark cannot be declared if the prior trademark has expired for over two years, or three years if a collective trademark is concerned, or can be considered revoked for non use prior to the filing of the principal claim or the counterclaim for invalidity. 4. For the purposes of applying Article 48 of Royal Decree No. 929 of June 29, 1942, as replaced by Legislative Decree No. 480 of December 4, 1992, the five year term runs from the date of the entry into force thereof.


Art. 234
Transfer and license of trademark
1. The provisions of Legislative Decree No. 480 of December 4, 1992, which govern the transfer and the licensing of trademarks apply also to trademarks already granted but not to agreements prior to the date of entry into force of Legislative Decree No. 480 of December 4, 1992.

Art. 235
Revocation for non use
1. The provisions of Legislative Decree No. 480 of December 4, 1992, which govern trademark revocation due to non-use, apply to the trademarks already granted upon the date of the entry into force of the said legislative decree, provided that they were not yet revoked on that date.

Art. 236
Revocation for deceptive use
1. The provisions of Legislative Decree No. 480 of December 4, 1992, which govern trademark revocation due to deceptive use, apply to the trademarks already granted on the date of the entry into force of the said legislative decree, in respect to a deceptive use made after such enforcement.

Section II
DESIGNS and MODELS


Art. 237 Earlier Applications 1. Applications for design or ornamental model registrations and applications for recording filed prior to the entry into force of Legislative Decree No. 95 of February 2, 2001, are dealt with in accordance with the provisions contained therein. However, as far as their form regularity is concerned, they are subject to the prior regulations.

Art. 238
Extension of protection
1. Patents for design or ornamental models granted prior to the date of the entry into force of Legislative Decree No. 95 of February 2, 2001, provided they have not expired nor have been revoked upon the said date, can be extended up to the maximum time limit of twenty-five years from the filing date of the patent application. Licensees and those who, in view of the forthcoming expiration, had made serious and actual investments to use the design or the model, have the right to obtain a compulsory, royalty free, non-exclusive license for the period of maximum duration. This right does not apply to the counterfeiters of patents which have not yet expired. 2. The grant taxes paid in a single instalment are valid and effective for the first two extensions. Taxes on the governmental grants relevant to the fourth and fifth five year period, starting from April 19, 2001 are of the same amount as the instalment of the third five-year period pursuant to Article 10, section IV, number 2, letters o) and f) of the tariff indicated in the chart attached to Presidential Decree No. 641 of October 26, 1972.

Art. 239
Limits to the protection granted under copyright law 1. For ten years starting from April 19, 2001, the protection granted to the designs and models in accordance with Article 2, paragraph 1, number 10, of Law No. 633 of April 22, 1941, does not operate only in respect of those who, prior to that date, started the manufacture, the offer or the sale of products made in accordance with the designs and models which were or had come into the public domain. The manufacturing, offering and sale rights cannot be transferred separately from the business concern.

Art. 240
Invalidity 1. The design and ornamental model patents granted prior to the date of entry into force of Legislative Decree No. 95 of February 2, 2001, are subject, as far as the invalidity causes are concerned, to the prior laws and, as far as the effects of the declaration of invalidity are concerned, to Article 77 of the present code.

Art. 241
Exclusive rights on components of a complex product 1. Until such time as ED Directive 98/71 concerning the legal protection of designs and models shall not be modified upon proposal of the Commission, pursuant to Article 18 of the said directive, the exclusive rights on the components of a complex product cannot be enforced in order to impede the manufacture and the sale of the components themselves, for the purpose of repairing a complex product, in order to reconstitute its original looks.

Section III
NEW PLANT VARIETIES


Art. 242
Duration of protection
1. The provisions of Article 109 of the present code apply to the patents for new plant varieties granted in accordance with Presidential Decree No. 974 of August 12, 1975, which have not expired or have been revoked upon the date of the entry into force of Legislative Decree No. 455 of November 3, 1998. 2. Licensees and those who, at the date of the entry into force of Legislative Decree No. 455 of November 3, 1998, had made serious and actual investments to use the new plant varieties covered by the breeder's right, have the right to obtain a compulsory, royalty free non-exclusive license for the period of maximum duration. This right does not apply to the counterfeiters of the rights which have not yet expired.

Section IV
INVENTIONS


Art. 243
Inventions of university researchers and public research entities
1. The provisions of Article 65 of the present code apply to the inventions achieved after the date of entry into force of Article 24 bis of the Royal Decree No. 1127 of June 29,1939 introduced by Law No. 383 of October 18, 2001 as well to those achieved after the date of entry into force of the present code through research commenced prior thereto.

Section V
EARLIER APPLICATIONS


Art. 244
Handling of applications
1. Patent or registration applications and those for recording and annotation even if already filed at the time of coming into force of this code, are handled in accordance with the provisions contained herein. The applications referred to in chapter IV, Section 1, are subject to the pre-existing rules in respect of the conditions for approval.

Section VI
PROCEDURAL PROVISIONS


Art. 245
Procedural provisions
1.The provisions of chapters I and iv of the title II and those of title Hl and the provisions of Article 35 and 36 of title V of Legislative Decree No. 5 of January 17, 2003, apply to the judicial proceedings and to the arbitrations which were commenced U by writ of summons served or petition filed six month latter the coming into force of this code. 2. Controversies on appeal started latter the coming into force of this code are submitted to the cognizance of the specialised divisions indicated under Article 134, 268 paragraph 3, even if the first degree proceeding or the arbitration were initiated and were conducted in accordance with the provisions previously in force.
3. Procedures of appeal ('reclamo') and cases on the merits initiated latter the coming into force of this code are submitted to the cognizance of the specialised divisions even it concerning precautionary measures granted in accordance with the provisions previously in force, are submitted to the cognizance of the specialized divisions. 4. The procedural provisions indicated in Article 136 regarding the jurisdictional function of the appeal Commission apply from one year latter the coming into force of this code. 5. The procedural provisions pursuant to Articles 137,146, 194, 195, 196, 198, 199 and 200 apply upon the coming into force of this code.

Section VII
ABROGATION
Art.246 --
Abrogative provisions
1. The following provisions are abrogated:
a) Royal Decree June 29 1939, n. 1127
b) Royal Decree February 5, 1940, n. 244
c) Royal Decree August , 1940, n. 1411
d) Royal Decree October 3l, 1941, n. 1354
e) Royal Decree June 21, 1942, n. 929
f) Presidential Decree May 8, 1948, n. 795
g) Article 34 of Presidential Decree January 10, 1957, n. 3
h) Presidential Decree June 30, 1972, n. 540
i) Decree of the Ministry of Industry, Commerce and Artisan Crafts February 22, 1973, published in the Official Gazette n. 69 of March 15, 1973
l) Presidential DecreeAugustl2, 1975, n. 974, except Article 18
m) Decree of the Ministry of Industry, Commerce and Artisan Crafts October 22,1976, published in the Official Gazette n. 15 of February 18, 1977
n) Presidential Decree January 8, 1979, n. 32
o) Presidential Decree June 22, 1979, n. 338
p) Law May 3, 1985, n. 194
q) Law October 14, 1985, n. 620 r) Decree of the Ministry of Industry, Commerce and Artisan Crafts February 26, 1986, published in the Official Gazette n. 104 of May 7, 1986
s) Law February 14, 1987, n. 60
t) Law February 21, 1989, n. 70
u) Decree of the Ministry of Industry, Commerce and Artisan Crafts July 19, 1989, n. 320 published in the Official Gazette No. 220 of September 20, 1989
v) Decree of the Ministry of Industry, Commerce and Artisan Crafts January 11, 1991, n. 122 published in the Official Gazette n. 85 of April 11, 1991
z) Law October 19 1991, n. 349
Legislative Decree December 4, 1992, n. 480
Law July 26, 1993, n. 302
aa) Presidential Decree December 1, 1993, n. 595
bb) Presidential Decree April 18, 1994, n. 360
cc) Presidential Decree April 18, 1994, n. 391
dd) Law December 21, 1984, n. 890
ee) Decree of the Ministry of Industry, Commerce and Artisan Crafts May 30, 1995, n. 342, published in the Official Gazette n. 192 of August 18, 1995
ff) Legislative Decree March 19, 1996, n. 198
Legislative Decree November 3, 1998, n. 455
Legislative Decree October 8, 1999, n. 447
gg) Legislative Decree February 2, 2001, n. 95
hh) Legislative Decree April 12, 2001, n, 164
ii) Article 7 of Law October 18, 2001, n. 383
ll) Legislative Decree February 2, 2002, n. 26
mm) paragraphs 8, 8 bis, 8 ter and 8 quater of Article 3 of Law June 15, 2002, n. 112, of conversion, with modifications, of Decree Law April 15, 2002, o. 63
nn) Decree of the Ministry for the Productive Activities October 17, 2002, published in Official Gazette n. 253 of October 28, 2002
oo) Article 17 of Law December 12, 2002, n. 273
pp) Paragraphs 72,73,79,80 and 81 of Article 4 of Law December 24 2003, n. 350.