Before expanding into the Italian market and hiring new workers, it’s crucial to prioritize safeguarding your intellectual property (IP). This can be the determining factor in maintaining your competitive edge and a successful global expansion.
While Italy has a robust legal framework for protecting and enforcing IP rights, navigating its intellectual property laws can be complex. Failing to protect your company’s IP could result in legal disputes, loss of market share, and damage to your reputation. Be proactive in safeguarding your inventions, design rights, trademarks, copyrights, and trade secrets from potential infringement or ownership claims by others.
Read on to learn more about IP rights and what you can do to protect yours in Italy.
Note: This guide is for informational purposes, and isn’t intended to provide legal advice.
1. NDAs are enforceable in Italy
In Italy, employment NDAs are legally enforced through binding contracts under the Italian Civil Code. All parties must sign the agreement voluntarily and without coercion. NDAs must meet specific requirements to be considered legitimate:
- An NDA must be specific. The information the parties consider confidential must be identifiable by the non-disclosure agreement. These contracts must detail any exceptions to the use of confidential information and specify the duration of confidentiality.
- An NDA must be reasonable. The terms of the NDA can't place an undue burden on the employee.
- Penalty clauses in an NDA. It is recommended to include a penalty clause in an NDA to encourage employees to comply and mitigate the risk of disclosure of know-how. When drafting the compensation amount in the clause, it's essential to be careful and avoid making it excessive to avoid any reduction by a judge, in case of damages.
Per the Italian Civil Code, individuals are obligated to maintain confidentiality of information. It is customary for employees, consultants, contractors, potential business partners, or merging partners to sign NDAs, also called confidentiality agreements.
It's important to note that NDAs may not protect all forms of intellectual property and do not automatically grant you ownership of IP rights.
2. There are 4 common types of IP rights in Italy
Different types of intellectual property rights are acknowledged in Italy, including geographical indications, trade secrets, and plant variety rights. The most commonly recognized ones are copyrights, patent trademarks, industrial designs, and trademarks.
Copyright. As Italy is a member of the European Union, copyright laws are followed per EU regulations. International copyright treaties and conventions such as the International Convention for the Protection of Performers, Producers, and Broadcasting Organizations of 1961; the Berne Convention of 1971; and the World Intellectual Property Organization (WIPO) Copyright Treaty of 1996 are enforced as well.
According to the Italian Copyright Law (CL), copyright protection is granted to creators upon the creation of their work. Article 25 of the CL outlines the works protected by copyright in Italy, including literature, music-related content, drama works, databases, buildings, and building plans. However, it is advisable to register your copyrighted works with the Italian Copyright Office (SIAE) to establish ownership, make legal action easier in Italian courts, and avoid infringement.
Trademarks. The Italian Patent and Trademark Office (UIBM) is responsible for registering trademarks that are protectable under Italian law, including a name, logo, or design for your goods or services. You can register a trademark locally with the UIBM or regionally by applying the European Union Trademarks (EUTM), for trademark protection in all EU member states. Trademarks are valid for 10 years and can be renewed indefinitely under trademark law.
Along with the WIPO international agreement, Italy is part of the Paris Convention for the Protection of Industrial Property 1883.
The registration process can take several months to a year (or more), depending on the complexity of the trademark and any oppositions filed. These are the registration steps:
- Conduct a trademark search.
- File a trademark application.
- The trademark application is examined and reviewed.
- The trademark registration is published for opposition purposes in the Italian Trademark Gazette.
- A registered trademark and certificate of registration are issued.
Patents. In Italy, patents are awarded by the UIBM, which gives the inventor exclusive rights to their invention for a maximum of 20 years from the filing date. The invention must be innovative, original, and have practical applications. Patent rights are regulated by section IV of the Industrial Property Code. It is possible to obtain a Unitary Patent for 17 European Union countries, including Italy, by following a simplified procedure at the European Patent Office (EPO).
A patent for an invention lasts 20 years, while a patent for a utility model expires after 10 years from the filing date. Neither type of patent is renewable. Once the patent expires, it becomes public property and can be used, sold, or imported without the owner's consent.
Here is the application process for an Italian patent:
- Conduct a patentability and novelty search—before filing a patent application.
- File a patent application.
- An examination of formal requirements for patentability is conducted.
- The patent is published in the Italian Patent Gazette for possible opposition filing.
- The patent is granted and the certificate is issued (valid for 20 years from the filing date).
Industrial designs. Industrial designs can be registered with the UIBM and protect a product or object's ornamental or aesthetic aspects. It covers different items, like crafts, packaging, symbols, and computer icons. The design must be new and different from any others already available to be registered. Once registered, it's protected for five years and the IP protection can be renewed for up to 25 years.
3. Worker classification is vital to IP protection
Unlike employees, contractors own the copyright to their work unless a written agreement states otherwise. Article 2222 of the Italian Civil Code considers individuals who work independently as self-employed contractors.
Protect your company by covering all the bases in a written agreement that includes explicit information on the following:
- Background on IP and other subject matter owned by each party before entering into a work arrangement
- Any rules for IP generated during and within the work arrangement
- Any rules for IP after the work arrangement ends
4. Employers own the IP rights to their employees’ inventions (with exceptions)
In most cases, employers own the IP rights of inventions made by employees during their employment at the company. However, there are some scenarios where that isn’t the case:
- Some employees may invent something without being compensated for it during their employment. In such cases, the employer has the right to any financial gains from the invention, but the employee is recognized as the author of the invention and has the right to remuneration.
- An invention was created by employees using their own resources while working within the company's business sector. As such, the employee has both economic and creative rights to the invention. However, the employer may have the right to purchase the patent or obtain exclusive/non-exclusive use of the invention through pre-emption.
5. Italian law on trade secrets is one of the most protective in Europe
A trade secret refers to confidential information a business uses to maintain its competitiveness in the market. This information can be any manufacturing, industrial or commercial asset, ranging from marketing strategies to supplier processes.
A trade secret is considered as such if:
- It is a secret.
- It has economic value as a secret.
- Steps have been taken to ensure that it remains confidential.
According to the Italian Industrial Property Code's Articles 98 and 99, trade secrets can receive protection indefinitely, provided that the necessary agreements are signed. For trade secrets to be entitled to legal protection in the Italian market, it's essential to have the appropriate non-disclosure and non-compete agreements in place, since trade secrets are not registered rights.
Italy has also implemented the provisions of the EU Directive (EU) 2016/943, which protects undisclosed trade secrets and business information from unfair competition, unlawful acquisition, use, and disclosure.
Frequently asked questions about IP law in Italy
Who owns IP in Italy: employee or employer?
In Italy, the default rule is that the employer owns the IP rights created by an employee in the course of their employment. This is unless there is a written agreement between the employer and employee that states otherwise. The one exception: The IP was created outside of working hours or using the employee's own equipment.
What is an IP assignment agreement?
An IP assignment agreement is a legal document that makes sure any intellectual property an employee creates while working for a company belongs to the company. It is important for trademarks, trade secrets, patents, and any other transfer of intellectual property rights as it states who the rightful owner is.
Italian law requires IP assignment agreements to be in writing and signed by both parties. It is also required to be registered with the Italian Patent and Trademark Office (UIBM) to be valid against third parties. Failure to register the agreement does not render it unenforceable if the assignee can prove that the assignor intended to transfer ownership of the IPR—though this can be difficult to prove.
Are databases protected by copyright law in Italy?
Yes, in Italy, databases are protected by copyright law.
A database refers to a systematically arranged collection of works, data, or other elements that can be accessed individually by electronic or other means. The database creator has the legal right to prohibit the extraction and reuse of all or a significant part of it. This right lasts 15 years after January 1st of the year following its creation. No registration is required to protect a database under copyright law.
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Rippling and its affiliates do not provide tax, accounting or legal advice. This material has been prepared for informational purposes only, and is not intended to provide, and should not be relied on for, tax, legal or accounting advice. You should consult your own tax, legal and accounting advisors before engaging in any related activities or transactions.