Industrial property: how to protect companies?

In this article we answer the most frequently asked questions that companies pose to the Firm in order to protect their industrial property rights.

How to protect software?

Italian law provides two tools for protecting software.

The first tool is copyright, as provided by Article 2 of Law 633/1941 (copyright law). Software is considered a work of genius and, as such, is protected by copyright from its creation. This means that the author of the software (i.e., the employer or principal) has the exclusive right to use, reproduce, distribute, and modify it.

Protection arises automatically at the moment of creation, without the need for further validation actions. However, for evidentiary purposes, it is possible to register the source code of the software with the SIAE, or the Italian Society of Authors and Publishers. This allows you to acquire certain proof of the existence of the software and the date of creation, which can be useful in case of legal disputes.

The second means through which to protect software is through patents.

In short, in order to file a patent application, it is necessary to show that the software has a technical effect beyond the normal interaction between program and computer.

It is necessary for the patent to be presented as a method or technical means that implements a method. In other words, the patent must describe the invention in terms of a series of steps or a specific hardware configuration, not just as a piece of code. Finally, the software must have a technical effect that solves a specific problem.

Who owns the ownership of employee inventions?

Employee inventions in Italy are governed by Article 64 of the Italian Industrial Property Code, which provides for 3 different cases:

• service inventions: if the employee has been hired to perform inventive activity and receives specific remuneration for this activity, the employer owns all rights to the inventions developed, while the employee will be recognized exclusively as the author of the inventions and will not be entitled to any further remuneration;
• business inventions: if the employee has not been hired to perform inventive activity and no specific remuneration is provided for this purpose, but develops some inventions in the performance of the employment contract, using the employer’s tools, the employer will own all rights to the inventions and the employee will be recognized exclusively as the author of the invention. In this case, the employee will be entitled to fair compensation;
• occasional inventions: if the invention, although falling within the scope of the employer’s activity, is not developed in the performance of work, thus, outside the constraint of subordination, using its own tools, the employer may exercise the right of option to use the invention, or to subsequently acquire the relevant patent against payment of the fee or price to the employee.

As for the so-called freelancers, the Jobs Act provides that the rights of economic use, in the case of original and inventive contributions by the self-employed worker, accrue to the latter “…except where the inventive activity is provided for as an object of the contract of employment and compensated for that purpose” [Law 81/2017, so-called Jobs Act, Art. 4].

How to protect trade secrets?

The protection of trade secrets is provided for in Article 98 of the Italian Intellectual Property Code.

In order for such information to be protected, it must (i) be confidential, (ii) have economic value as confidential, and (iii) be subjected, by its owner, to measures that can be considered appropriate to keep it secret.

The measures to be taken must be both technical and legal/contractual in nature. In fact, in order to ensure the confidentiality of such information, appropriate contracts must be signed, such as, but not limited to, confidentiality agreements (NDAs) with potential clients, contractors or investors before disclosing confidential information, as well as non-compete, non-selling, exclusivity and intellectual property clauses in employment contracts.

Additionally, companies may adopt policies related to data security that restrict access to them based on the so-called need-to-know principle.

How to protect the company's trademark and/or brand name?

The company’s trademarks can be registered in the name of the company in the classes of goods and services of interest (according to the so-called Nice Classification).

In addition, it is advisable to proceed with the registration of the domain name used for the company’s activities of interest.

Italian law also provides for protection of unregistered marks, if used. The extent of protection of such marks (so-called “de facto trademarks”), both geographically and in terms of product/service protection depends on the manner and intensity of use.

If the de facto mark is used on a non-mere local level, such a mark constitutes a valid antecedent for opposition to identical or similar marks registered or used at a later date. Conversely, if the de facto trademark is used only locally, its owner will have to “endure” the presence of a later registered identical or similar mark in the marketplace.

Precisely because of such limitations to trademark protection, it is always advisable to register one’s trademark in the classes and territories of interest in order to enforce one’s rights in case of infringement.

What means of protection does the company have in case of infringement of its industrial property rights?

The owner of industrial property rights can take action against anyone who infringes these rights. To achieve a quick result and see the infringement cease, there are some urgent measures such as: description, injunction, seizure, and withdrawal of the infringing goods from the market.

In the case of particularly serious situations, such as in the case of counterfeit goods, criminal prosecution is also possible.

In addition, the rights holder can always seek compensation for damages suffered in proceedings on the merits.