Strategic guidelines applying to intellectual property are the first detailed provision of the National Recovery and Resilience Plan #NextGenerationItalia.

A book of dreams for Intellectual Property professionals and innovation-driven businesses. Our takeout.

By the Ministerial Decree of 23rd June 2021, the Minister of Economic Development adopted the intellectual property guidelines for the years 2021-2023 (otherwise known as “Strategic Plan for Intellectual Property”). Thanks to some fortunate circumstances, it is the first implementation provision of the National Recovery and Resilience Plan #NextGenerationItalia (NRRP), approved by the European Commission, with the “Reform of the intellectual property system” mentioned in Mission 1, Section 2, “Digitalization, innovation and competitiveness of the productive system”.

The NRRP envisions to allocate extraordinary resources (30 million EUR) to enact a series of measures designed to promote and protect intellectual property in the framework of digitalization, innovation and competitiveness of the productive system.

For the sake of truth (hence the fortunate coincidences), the origin of the Strategic Plan for intellectual property goes hand in hand with the NRRP and, while partly carrying it out, its most authentic roots are embedded in the Action Plan of the EU Commission “Harnessing the innovation potential of the EU – Action Plan on intellectual property for promoting the EU recovery and resilience”, adopted last 25th November 2020. 

As early as April 2021 a draft of the guidelines available for public consultation was published and we provided an outline here. The document adopted today reckons with the suggestions and remarks set forth during the public consultation attended by some sixty players, among which Bugnion.

The strategic guidelines for industrial property pursue a goal: sketching a plan for the promotion of innovation culture alongside protection and enhancement of IP tools, while outlining the strategy of national interventions in a five-point programme (defined “challenges”):

– improve the IP protection system;

– incentivize the use and diffusion of IP, especially on the end of SMEs;

– facilitate access to and sharing of intangible assets, while ensuring fair investment yields;

– assure rigorous respect of intellectual property;

– strengthen the role of Italy in the framework of European and international forums on intellectual property.

To the reader knowledgeable about Intellectual Property, the matter-of-factness of the plan will come as a surprise. On the other hand, the plan introduction reads that “The strategic guidelines for intellectual property will pursue some preliminary tangible outcomes in the forthcoming arrangement of a bill to review the Intellectual Property Code (Legislative Decree of 10th February 2005, n. 30);”.  For the sake of completeness, we would like to point out that the intellectual property code in Italy groups together all the rules relating to inventions, utility models, new plant varieties, trademarks, designs and models, topographies of semiconductor products, but does not deal with copyright, which is regulated by an independent law (Law on Copyright, L. 633/1941).

As regards the guidelines, the section dealing with the review of the legislation shows a wide-ranging scope and benefits from hectic preparatory activities. The plan announces some of the themes to be addressed and explored by the reform project of the Intellectual Property Code amongst which it is worth recalling: the reform applying to  designs and models (thus tapping into the considerations under way at EU level), designed to regulate the “new types of designs (among which “graphic interfaces”, holograms and “virtual reality” or “augmented reality”); as for trademarks, it is considered the possibility to explicitly prevent trademarks which may be evocative of protected geographic indications and designation of origin from being registered; vis-à-vis Patents, the amendment to the provision concerning the ownership of inventions developed in university settings and public research bodies (art. 65 of the Intellectual Property Code), to be harmonised with the legislation in force in the other European countries (by transferring the ownership of inventions accomplished by researchers to the structure of belonging).

As a whole, the reform of the Intellectual Property Code “will …. aim to thoroughly specify a few provisions in place, thus capitalising on the experience acquired over the years”.

The guidelines also deal with the enforcement of the invalidity proceeding and revocation of trademarks (introduced by Legislative Decree n. 15 of 2019 following the transposition of the (EU) Directive 2015/2436) by January 2023 and plead to intensify the efforts of the Ministry of Economy “to define and set up the most appropriate operating setting knowing it is a matter of great interest”.

In other words, the plan advocates the (“effective”) simplification of the procedures such as extending the possibility to use the electronic filing of UIBM (Italian Patent and Trademarks Office) also to the procedures currently excluded as well as overcoming electronic notification systems currently confined to the cumbersome certified electronic email.

The Ministry’s commitment to address “A new electronic infrastructure designed to support the management of all IP applications and titles, based on state-of-the-art data processing technologies fit to supplement and update the existing data base with new, more advanced services supporting the usership” comes across as truly encouraging. Likewise, the promise of “modern maintenance of the current electronic filing system at UIBM” alongside the promise of text searching the content of documents found in the national database with a mind to effectively carrying out the search of Italian titles (the imperviousness of which has always characterised the Italian panorama).

As to the legislation update designed to combat counterfeiting, it is worth underlining the following steps: streamlining analysis and filing systems of seized goods; the will to timely ascertain the wrongful nature of seized goods while allowing the destruction of goods in case they were ascertained to be counterfeits while keeping a sample thereof (in line with the European legislation).

With reference to the policies developed to encourage the use of intellectual property tools, the guidelines review the success of the measures enacted so far and the over 80 million EU allocated in 2020/2021 to innovative Italian companies and start-ups to access advisory services.

In this regard, the Government’s efforts will be designed around on-going support measures while considering refunding when discussing the budget law, and the possibility to extend the beneficiaries audience beyond innovation-driven start-ups while envisaging the introduction of additional services.

Last but not least, the plan refers to measures which, other than short-term, will have a long-term impact also vis-à-vis the role Italy is deemed to play on the international stage “reckoning that the protection policies of IP have been gaining geo-political relevance”. Besides dealing with the operation of European patents and championing Milan as the city hosting on of the section of the Unified Patent Court (highly expected), the Plan also refers to a mid/long-term strategic perspective and to Italy’s active participation in multilateral institutional forums. The goal is to revitalize the country on the European and international scene aware that “The role of Italian businesses in the global value chain and the production of high-quality goods exposes Italy to the detrimental effect of counterfeiting, both offline or online”

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While one could hardly criticise the guidelines adopted, the plan faces one major risk, namely the possibility it might not be fully accomplished. And if on the one hand the plan is truly ambitious and challenging, on the other hand, the three-year implementation timeline may not be long enough. For sure after sharing thoughts and considerations with trade operators and framing them in ambitious, matter-of-fact guidelines, the way has been paved to building the future and pinning hopes on the rebirth of Italy also on the side of IP.

After all, following the bleak Covid emergency, 2021 is showing us that Italy can be extremely ambitious: from the Eurovision Song Contest award to the Wimbledon final all the way down to the European Football  Championship and the Olympic gold medal in the 100 metres, everything seems possible! Let us dream that the Italian Intellectual Property system will have improved by 2023 and the plan will be successfully accomplished.