What professional figure is responsible for filing and prosecuting trademarks, designs, and patents in Italy?

Italian Industrial Property Consultants: Patent and Trademark Attorneys

The Industrial Property Attorney or Consultant is a highly specialized professional in the law of various types of Industrial Property, namely trademarks, patents and designs. To practice, they must be registered with the Institute of Industrial Property Attorneys / Consultants. The Institute is headquartered in Milan and operates nationwide. The Institute keeps a public registry of all certified Industrial Property Attorneys in Italy, which can be searched online through their website: https://www.ordine-brevetti.it/en/elenco-iscritti

The Italian Institute of Industrial Property Attorneys is the official body that certifies and regulates trademark and patent attorneys in Italy.

Membership is mandatory for professionals to represent Clients before the Italian Patent and Trademark Office (UIBM) and the Appeal body wich enjoys a special jurisdiction rights. The Membership is also mandatory for Italy based professionals who wish to represent Clients before the EU Intellectual Property office (EUIPO).

Industrial Property Attorneys (Consultants) make their services available to Clients as self-employed professionals or within specialized firms or offices.

What responsibilities, duties and / or limitations do certified industrial property attorneys have?

• Maintaining constant professional development (constant professional update);
• Preserving professional secrecy (there is no need to sign a pecifica non disclosure agreement with this category of professionals);
• Holding professional indemnity insurance;
• Adhering to the obligations and duties prescribed by the Code of Professional Ethics;
• Represent clients before patents and trademarks offices, like UIBM (Italian patent and trademark office), EUIPO, WIPO, EPO and the relative Appeal bodies in all the matters concering industrial / intellectual property rights;
• Negotiate and draft contracts and agreements that involve industrial property assets;
• Provide legal counsel on unregistered intellectual property rights;
• The scope of their professional action is limited to extra-giudicial activities and they can’t represent clients in court proceedings without a fully licensed lawyer;
• The are limited to handling matters related to industrial property rights, such as trademarks, patents, and registered designs and situations when those rights are interfering with unregistered intellectual property rights.

What are the requirements to become an industrial / intellectual property attorney in Italy?

• Having a university degree;
• Completing the mandatory internship under the supervision of a Consultant registered with the Institute of Industrial Property Consultants;
• Passing a State exam to obtain professional qualification, consisting of a written and oral exam on public and private law, civil procedure, Italian and EU industrial property law, and a foreign language exam.

Their entire career is focused on the protection and enhancement of Industrial Property Rights. A registered consultant is a strategic partner for safeguarding a company’s key assets such as patents, trademarks and designs.

What are the services an industrial property attorney / consultant can provide?

• Developing protection strategies for industrial property assets;
• Filing registration/patent applications in Italy and abroad (if qualified);
• Prosecuting applications until obtaining industrial property rights (adversarial procedures with Offices, oppositions, appeals, annuities or renewals, etc.);
• Representing clients in opposition and/or cancellation proceedings before administrative authorities: UIBM, EUIPO, EPO;
• Conducting due diligence on industrial property titles (for M&As or other extraordinary transactions);
• Providing infringement, patentability or registrability opinions;
• Conducting prior art searches;
• Representing clients before the Appeals Commission (UIBM), Appeal Commissions (EUIPO) and Opposition Division and Board of Appeal (EPO) without requiring a lawyer’s assistance;
• Acting as a Party Technical Consultant or Court Technical Consultant in infringement or validity cases of exclusive rights, if qualified;
• Serving as a Mediator, if qualified;
• Other services based on each consultant’s personal qualifications, e.g. litigator.

What regulatory body is designated for managing intellectual / industrial property attorneys in Italy?

The Institute of Industrial Property Consultants

The Institute of Industrial Property Consultants was established by Ministerial Decree in 1981 and is currently governed by the Industrial Property Code (Legislative Decree No. 30 of February 10, 2005) in Articles 201 and following.

According to this legislation, representation of third parties before the Italian Patent and Trademark Office is reserved for members of the Register of Industrial Property Consultants and members of the Bar Association.

The Register of Industrial Property Consultants consists of two sections: patents and trademarks.

“Patent Consultants” registered in the patents section are qualified for inventions, utility models, designs, new plant varieties and semiconductor topographies.
“Trademark Consultants” are qualified for distinctive signs (trademarks), geographical indications and designs.

The Institute has a national character, with no territorial sections. The list of consultants can be consulted in the dedicated section of the Institute’s website: register.

What other professional figures handle intellectual property enquiries in Italy?

Lawyers

All members of the Bar Association can represent third parties before the Italian Patent and Trademark Office (UIBM) and the EUIPO. Some lawyers choose to specialize in Industrial and Intellectual Property Law.

Lawyers are essential, particularly for legal actions related to industrial and intellectual property rights, and they often work closely with Industrial Property Сonsultants, especially when specific technical expertise is required, such as in patent matters.

Administrative Practice Facilitators

Operators or agencies that offer facilitation services in the preparation of filing forms and in the application process for registration and/or patenting.

Such agencies cannot provide legal consulting and/or strategic services, nor represent the clients before the official bodies, as they lack the necessary qualifications to practice, and they cannot act on behalf of the Applicant for registration, as they are not authorized to represent third parties before the authorities.

Therefore, the filing of registration and/or patent applications is ususally carried out in the name of the Applicant, without assuming representation, acting in a sort of “missrepresentation” often in saubstitution to the Client or side-by-side with a Client.

Is it mandatory to be professionally represented before the Italian Trademark and Patent Office and before the European Union Intellectual Proprty Office?

Voluntary Representation

Voluntary representation in Italy: Article 201 of the Industrial Property Code states that “no one is required to be represented by an authorized agent in proceedings before the Italian Patent and Trademark Office” (UIBM).

If one chooses to be represented, the same article specifies that the power of attorney can only be granted to agents registered in a register established at the Council of the Order of Industrial Property Consultants and/or to a lawyer registered in their professional bar association. 

Representation in the EU: Regulation (EU) 2017/1001 on the European Union trade mark, in Article 120, states that representation before the European Union Intellectual Property Office (EUIPO) can only be assumed by authorized agents registered on the list kept by the Office and by authorized lawyers. 

Non-EU countries: As for professional representation in foreign countries, reciprocity rules apply. Since foreign natural and legal persons need to be domiciled/headquartered in the EU/EEA to be able to request registrations in Italy or for other actions such as oppositions or cancellations (for EUIPO), the choice of foreign domicile is also necessary for Italian citizens. This implies the need to turn to foreign correspondents, unless proceeding with registrations through the Madrid system for trademarks or via the PCT for patents (assuming a smooth course of registrations, otherwise it will be necessary to proceed with the appointment of the foreign agent).

Curiosity: What incompatibilities apply to the role of Industrial Property Consultant?

Article 205 of the Industrial Property Code indicates cases of incompatibility of registration in the roll of industrial property consultants with certain activities: registration in the Consultants Register  incompatible with any private or public employment not related to the specialized activity in the field of industrial law, and in particular, with the exercise of commerce, the profession of notary, professional journalist, mediator, stockbroker or tax collector.

Furthermore, Industrial Property Consultants are subject to the Code of Ethics (The Professional Code of Conduct) which prohibits consultants from having any personal interest in the activities of Clients, working on commission or in a conflict of interest. They are bound by professional secrecy and confidentiality (Article 206 of the Industrial Property Code and Article 4/a of the Professional Code of Conduct) and have a series of moral conduct obligations towards Clients, being obliged to practice the profession with competence, independence and “impartially in the interest of Clients, avoiding any conflict of interest, potential or actual, and without regard to their personal interests” – Article 1/c) of the Professional Code of Conduct.

Patent and Trademark Offices

In Italy, the national authority responsible for registration and patenting has been established within the Ministry of Enterprises and Made in Italy: the Italian Patent and Trademark Office (UIBM).

In addition to this activity, the Directorate General for the Protection of Industrial Property of the Italian Patent and Trademark Office is engaged in combating counterfeiting at the national level and in collaboration with the EUIPO. More information is available on the UIBM website.

National patent and trademark offices: in each country there is a national office, corresponding to the Italian Patent and Trademark Office, where direct national and foreign filings can be made.

The EUIPO (European Union Intellectual Property Office) is the European Union’s intellectual property office responsible for managing EU trademarks and designs. It will also be responsible for registering geographical indications for craft and industrial products and standard essential patents (SEPs) granted by the EPO.

The EPO (European Patent Office) is the European Patent Office, which deals with patenting at the European level.

WIPO (World Intellectual Property Organization) provides, through various international agreements, the possibility of proceeding with registration or patenting abroad, using a single and facilitated administrative system.