Sources of Law

Patent protection in Italy is governed mainly by Articles 45–81-octies and 117–146 of the Italian Industrial Property Code (Legislative Decree No 30/2005, the IP Code), together with Articles 2584–2591 of the Civil Code. The framework is supplemented by the European Patent Convention, the Patent Cooperation Treaty, the Paris Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and relevant EU rules, including those on biotechnology and supplementary protection certificates.

Italian patent law is also shaped by the case law of the specialised business courts. For European patents, the Unified Patent Court (UPC) is relevant where the patent falls within its jurisdiction and has not been opted out.

Patentable Subject Matter

A patentable invention must provide a technical solution to a technical problem and satisfy the requirements for novelty, inventive step and industrial applicability. Protection may cover products or processes, including mechanical devices, chemical and pharmaceutical products, manufacturing processes, medical devices, biotech inventions and computer-implemented inventions.

Exclusions

Discoveries, scientific theories, mathematical methods, aesthetic creations, business methods, presentations of information and computer programs are excluded. The exclusion is interpreted narrowly: software and AI-related inventions may be patentable where they produce a technical effect beyond the normal interaction between software and hardware. Methods for surgical, therapeutic or diagnostic treatment of the human or animal body are excluded, although products for use in such methods may be patentable. Plant varieties, animal breeds and essentially biological processes are also excluded.

Utility Models

Utility models are available for new technical solutions concerning the shape, structure or arrangement of a product that confer a functional advantage. Protection lasts for ten years from filing.

Filing and Examination

Italian patent applications are filed with the Italian Patent and Trade Mark Office (UIBM). The application must identify the applicant, describe the invention and include claims and, where relevant, drawings, and the filing fees must be paid.

UIBM checks formal requirements, unity of invention and manifest exclusions from patentability. For national filings, the European Patent Office (EPO) normally carries out the prior art search and issues a search report and written opinion. The applicant may respond with observations or amendments, without extending the application beyond its original content. If objections remain, UIBM may request further replies before granting or refusing the application; refusals may be appealed.

Timelines and Costs

The search report is usually issued within about nine months. Applications are published after 18 months, unless early publication is requested, and grants often take around 24–30 months if no major objections arise.

Costs depend on the invention, claims, translations and professional work, but a standard Italian filing usually involves initial costs of a few thousand euros.

Representation

Local representation is not always mandatory, but using an Italian or European patent attorney is strongly advisable.

Rights Conferred

A patent gives its owner the exclusive right to exploit the invention and to prevent third parties from making, using, offering for sale, selling or importing the patented product, or using the patented process and dealing in the direct product of that process, without consent. The inventor also has the moral right to be named as inventor, which is inalienable and perpetual.

Term and Maintenance

The standard term is 20 years from the filing date. Annual maintenance fees are due from the fifth year, and increase progressively. If a fee is not paid on time, late payment is possible within a six-month grace period subject to a surcharge. After that, the patent lapses, unless reinstatement is available and the patentee proves that the failure occurred despite all due care required by the circumstances being taken.

Supplementary Protection Certificates (SPCs)

SPCs are available for medicinal products and plant protection products under the EU framework. Their duration is calculated by reference to the period between the patent filing date and the first marketing authorisation in the EU, minus five years, up to a maximum of five years. A further six-month paediatric extension may be available for medicinal products.

Entitlement and Employee Inventions

The right to a patent belongs to the inventor or successor in title. For employee inventions, Italian law distinguishes between:

• inventions made within specifically remunerated inventive duties, which belong to the employer;
• inventions made within the employee’s duties but not specifically remunerated, which also belong to the employer but may give rise to fair compensation; and
• occasional inventions outside assigned duties, which generally belong to the employee, subject to the employer’s statutory option where the invention falls within its business field.

University and Research Inventions

For university and public research inventions, the inventor must disclose the invention to the institution, which normally decides whether to file and manage the patent. If the institution does not act within the statutory period, the inventor may proceed under the applicable rules.

Assignments and Licences

Patents may be assigned or licensed in writing. Recordal with UIBM is not required for validity between the parties, but is important for enforceability against third parties and chain-of-title publicity.

Direct and Indirect Infringement

Direct infringement includes the unauthorised manufacture, use, offer for sale, sale or importation of a patented product, as well as the unauthorised use of a patented process and dealing in the product directly obtained by that process. The assessment focuses on whether the defendant commercially exploits the protected technical teaching.

Indirect infringement is recognised where a party supplies or offers to supply, to an unauthorised person, means relating to an essential element of the invention that are suitable and intended for putting the invention into effect. Liability requires that the supplier knows of the intended infringing use, or should know with ordinary diligence.

Scope of Protection and Equivalents

The claims define the scope of protection; the description and drawings are used to interpret the claims. Infringement may be literal or by equivalence. Italian courts apply a doctrine of equivalents, protecting variants that implement the same inventive idea through substantially equivalent means, provided that the variant would not deprive the claims of their proper limiting function.

Defences

Typical defences include invalidity, non-infringement, prior use, exhaustion, private and non-commercial use, experimental use, the Bolar exemption and other statutory limitations. Compulsory licensing may be relevant in limited circumstances. In disputes concerning standard essential patents, FRAND principles may also be central, including the parties’ conduct during licensing negotiations.

Jurisdiction and Timelines

Patent disputes in Italy are handled by the specialised business courts (Sezioni Specializzate in Materia di Impresa), which have jurisdiction over patent matters. For European patents within the UPC system, the UPC may also have jurisdiction, including through the Milan Local Division and, for certain actions, the Milan section of the Central Division.

Preliminary proceedings usually last around six to nine months, including any court-appointed expert phase (CTU), although urgent ex parte measures may be obtained more quickly in appropriate cases. Proceedings on the merits are longer and generally take around two to three years at first instance.

Parallel Proceedings

Infringement and validity issues may run in parallel but are closely linked. Under Article 117 of the IP Code, the grant of a patent does not prevent actions concerning validity or ownership. Invalidity may be raised as a counterclaim in infringement proceedings or through separate nullity proceedings.

Where the same court hears both issues, they are usually dealt with together. If validity proceedings concerning the same patent are pending before another court, the infringement action may be stayed, particularly where validity is a preliminary issue. Italian courts may also take EPO opposition or limitation proceedings into account, although national infringement proceedings remain autonomous.

Interim Measures and Remedies

Interim measures include preliminary injunctions, seizure, withdrawal from the market and description orders (descrizione) to collect evidence. Final remedies include:

• permanent injunctions;
• destruction or assignment of infringing goods and means of production;
• publication of the judgment;
• damages;
• reasonable royalties; and
• recovery of the infringer’s profits.

Costs

The successful party may recover court costs and attorneys’ fees, but recovery is assessed by the court and is not always equal to the full amount actually incurred.

Trade mark protection in Italy is governed by Articles 2569–2574 of the Civil Code and by the IP Code, together with its implementing regulation.

Under Article 7 of the IP Code, a trade mark may consist of any sign capable of distinguishing the goods or services of one undertaking from those of others and of being represented in the register in a clear and precise manner. Protectable signs include:

• words;
• personal names;
• logos;
• figurative elements;
• letters;
• numerals;
• shapes of goods or packaging;
• colours and colour combinations;
• sounds;
• position marks;
• motion marks; and
• other non-traditional signs.

Following EU reform, graphic representation is no longer required, but the representation must allow the subject matter of protection to be determined clearly and precisely. For this reason, signs such as smells or tastes remain difficult to register in practice. For non-conventional trade marks, the decisive factor is the perception of the relevant public and the sign’s ability to be perceived as an indication of origin.

Unregistered Trade Marks

Italian law recognises unregistered trade marks (marchi di fatto), but protection depends on actual use and reputation. A prior user may continue using the mark within the limits of prior use. If the sign has qualified reputation (notorietà qualificata), meaning reputation that is not merely local, it may also affect the novelty of a later conflicting registration and support invalidity or opposition arguments where confusion is likely. There is, however, a line of case law and legal scholarship that recognises de facto rights as genuine rights in their own respect – albeit untitled – rather than merely as a basis for invalidating a subsequent registration; conversely, another strand of case law frames their protection within the scope of unfair competition.

The essential requirements for trade mark protection are distinctiveness, novelty and lawfulness. The sign must make the goods or services of one undertaking distinguishable from those of others. Generic, descriptive or customary signs are not registrable unless they have acquired distinctiveness through use.

Novelty is lacking where the sign conflicts with earlier trade marks or other earlier distinctive signs and the conflict creates a likelihood of confusion, including a likelihood of association. For marks with reputation, protection may also extend to situations where the later sign takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the earlier mark. A mark must also be lawful and not contrary to law, public policy or accepted principles of morality.

Acquired Distinctiveness

Acquired distinctiveness, or secondary meaning, is established by showing that, through use, the relevant public perceives the sign as identifying the commercial origin of the relevant goods or services. Evidence may include:

• duration and intensity of use;
• sales figures;
• market share;
• advertising investments;
• media coverage;
• consumer surveys; and
• other proof of recognition.

Famous and Well-Known Marks

Famous or well-known marks may be protected in Italy even if not registered locally, provided that their well-known status or reputation is established among the relevant public in Italy. Well-known marks under Article 6-bis of the Paris Convention may prevent or invalidate later conflicting filings. Marks with reputation may also receive broader protection against dilution, tarnishment or free riding, including in certain cases for dissimilar goods or services.

The rights may be exercised on the basis of the trade mark application itself, as the subsequent grant has retroactive effect. Unregistered marks may be enforceable where prior use and reputation are proven, but registration provides stronger, clearer and more readily enforceable rights.

Filing Procedure

National trade mark applications are filed with UIBM, online or through authorised filing channels. The application must identify the applicant, provide a clear representation of the sign and list the goods and services according to the Nice Classification. Italy allows multi-class applications.

UIBM examines formal requirements and absolute grounds for refusal, including distinctiveness, lawfulness and the proper identification of goods and services. It does not conduct an ex officio search for earlier rights. If objections are raised, the applicant may respond within the deadline set by the Office.

Publication, Opposition and Registration

If the application is accepted, it is published in the Official Trade Mark Bulletin. Owners of earlier rights may file an opposition within three months from publication. If no opposition is filed, or if the opposition is rejected or settled, the mark proceeds to registration.

Timelines and Costs

Where no objections or oppositions arise, registration commonly takes around 12–18 months. Costs depend mainly on the number of classes and whether professional assistance is used. Opposition proceedings can significantly extend the timeline and cost.

Italian trade mark protection lasts ten years from the filing date and may be renewed indefinitely for further ten-year periods. Renewal requires filing a renewal application with UIBM and paying the relevant fees, generally during the last 12 months before expiry. Late renewal is possible within a six-month grace period, subject to an additional fee. The renewed mark must remain identical to the registered mark; only a reduction of classes or goods and services is permitted.

A registered mark must be put to genuine use within five years from registration. Genuine use means real commercial use of the mark, by the owner or with its consent, for the registered goods or services and in a manner consistent with its essential function of indicating origin. Token, purely internal or artificial use is not sufficient.

If the mark is not genuinely used within five years, or if use is suspended for an uninterrupted five-year period without proper reasons, it may be revoked in whole or in part. The burden of proving genuine use lies with the trade mark owner.

Registration gives the owner the exclusive right to use the mark in Italy and to prevent third parties from using, in the course of trade and without consent, identical or similar signs for identical or similar goods or services where confusion is likely. For marks with reputation, the owner may also prevent use that takes unfair advantage of, or is detrimental to, the mark’s distinctive character or reputation.

Use alone may also generate protection for an unregistered mark, but the scope depends on the extent and reputation of the prior use. A merely local unregistered mark generally gives only a limited right to continue that use.

The main limitations and defences include:

• descriptive use;
• use of non-distinctive indications;
• use of the name or address of a natural person; and
• referential use necessary to indicate the intended purpose of goods or services, such as accessories or spare parts.

These uses must comply with honest commercial practices, and must not be misleading or amount to use as a trade mark.

Other defences include lack of confusion, invalidity, revocation for non-use and exhaustion. Exhaustion applies once the goods have been placed on the EEA market by the trade mark owner or with its consent, unless legitimate reasons justify opposition to further commercialisation.

Trade mark infringement occurs where a third party uses, without consent, an identical or similar sign in the course of trade in a manner falling within the scope of the earlier right. This includes use creating a likelihood of confusion, including association. For marks with reputation, infringement may also arise from dilution, tarnishment or free riding, even where the goods or services are not similar.

Italy does not have a common law passing off action as such, but similar conduct may be pursued through trade mark infringement, unfair competition and misleading commercial practices, depending on the facts.

Trade mark disputes are heard by the specialised business courts, which also act as EU trade mark courts for EU trade mark matters.

Civil, Criminal and Customs Remedies

Civil remedies include:

• interim and final injunctions;
• seizure;
• withdrawal from the market;
• destruction or assignment of infringing goods;
• damages;
• recovery of profits; and
• publication of the decision.

Interim measures are widely used in counterfeiting and urgent cases.

Criminal sanctions may apply in cases of counterfeiting and commercialisation of counterfeit goods. Customs measures are also available under the EU customs enforcement framework, allowing customs authorities to detain goods suspected of infringing trade mark rights.

Italian copyright law is governed primarily by Law No 633 of 22 April 1941 (the Copyright Law), as amended over time, together with relevant EU directives and regulations.

Protection covers creative works of the human intellect in any mode or form of expression. The statutory list is not exhaustive and includes:

• literary, dramatic, musical, scientific and educational works;
• works of figurative art, architecture, theatre and cinematography;
• photographs;
• software; and
• databases.

Software is protected as a literary work where it is original. Databases may be protected by copyright where the selection or arrangement of their contents reflects the author’s intellectual creation, and may also benefit from sui generis database protection where the statutory investment threshold is met.

Industrial Designs and Applied Art

Industrial designs and works of applied art may also be protected by copyright where they meet the originality threshold. Italian law still refers to creative character and artistic value for applied art, but this requirement is interpreted in light of EU case law, which focuses on whether the work reflects the author’s own intellectual creation. Copyright may coexist with design protection where each regime’s requirements are independently satisfied.

Copyright protection requires the work to be original, in the sense that it reflects the author’s own intellectual creation and creative choices. Protection covers the form of expression, not ideas, methods, principles or information, as such.

Italian law does not require registration, deposit or other formalities. Copyright arises automatically when the work is created and expressed in a perceptible form. Registration or deposit may nevertheless be useful for evidentiary purposes – for example, to prove authorship, date of creation or chain of title.

The author is the natural person who creates the work. A presumption of authorship applies to the person indicated as author on the work or announced as such in its use, including through pseudonyms or stage names where they are commonly recognisable.

Where a work is created through inseparable and indistinguishable contributions, copyright belongs jointly to all co-authors, and their shares are presumed equal unless otherwise agreed. In collective works, the person who organises and directs the creation is treated as the author of the collective work, while individual contributors retain rights in their own contributions, subject to the applicable agreements.

Employees and Contractors

There is no universal rule automatically assigning all economic rights to an employer or commissioner. Ownership depends on the type of work, the employment or services agreement and the purpose for which the work was created. In employment relationships, the employer generally acquires the economic rights necessary to exploit works created in the performance of the employee’s duties, but the scope should be expressly regulated.

Specific statutory rules apply to software, databases and industrial design works. Under the Italian Copyright Law, Article 12-bis is not a general statutory rule: by its wording, it applies specifically to software and databases created by an employee in the performance of their duties or under the employer’s instructions. Article 12-ter contains a similar specific rule for industrial design works.

That said, Italian case law has often treated these provisions as reflecting a broader principle: economic exploitation rights may vest in the employer or client where the work is created in the performance of employment duties, or under a commission whose object is precisely the creation of the work for the client’s economic exploitation. This should still be expressly regulated contractually, especially for contractors. Moral rights remain with the individual author.

Copyright owners have the exclusive right to publish and economically exploit the work in any form or manner, whether original or derivative. Economic rights include:

• reproduction;
• distribution;
• communication to the public;
• making available online;
• public performance or display;
• adaptation;
• translation;
• transformation;
• rental; and
• lending, subject to statutory limitations.

Economic rights may be transferred or licensed, but transfers are interpreted according to the rights expressly or necessarily included in the agreement.

Italian law recognises strong moral rights, including:

• the right to claim authorship;
• the right to object to modifications or distortions that may prejudice the author’s honour or reputation; and
• the right to withdraw the work from the market for serious moral reasons.

Moral rights are inalienable, non-waivable and, after the author’s death, may be exercised by the persons identified by law.

Economic rights generally last for the life of the author and for 70 years after the author’s death. For works of joint authorship, the term runs from the death of the last surviving co-author. Specific rules apply to certain categories of works and related rights.

Italian law does not have a US-style termination right. However, authors and performers may have statutory protections in exploitation contracts, including transparency and fair remuneration mechanisms and, in cases of non-exploitation of rights granted on an exclusive basis, the possibility to seek termination or revoke exclusivity under the rules implementing the DSM Directive.

Italian Copyright Law contains a closed list of exceptions and limitations (libere utilizzazioni), which include:

• private copying for personal purposes;
• quotation and citation for criticism, discussion or review;
• certain uses for teaching and scientific research;
• uses for reporting current events; and
• specific exceptions for text and data mining.

Parody, caricature and pastiche are recognised in line with EU law, even though their practical scope is assessed on a case-by-case basis.

Courts interpret exceptions restrictively. The use must fall within the statutory purpose, be proportionate and comply with the three-step test: it must not conflict with the normal exploitation of the work and must not unreasonably prejudice the legitimate interests of the rights holder. Quotation, for example, must not substitute the original work nor create economic competition with it.

Copyright infringement consists of any unauthorised use of a protected work within the scope of the rights holder’s exclusive rights. It may involve unauthorised reproduction, communication to the public, distribution, adaptation or making available online. Italian case law also distinguishes counterfeiting, plagiarism and plagiarism-counterfeiting, depending on whether the conduct concerns economic exploitation, appropriation of authorship or both.

Civil Remedies

Civil remedies include:

• interim and final injunctions;
• seizure;
• withdrawal from the market;
• destruction or removal of infringing copies;
• publication of the decision; and
• damages.

Courts may impose penalties for non-compliance with injunctions. Blocking orders against infringing websites, including mirror sites and related domain names, are available through courts and through AGCOM procedures.

Damages may cover pecuniary and non-pecuniary loss. Where precise proof is difficult, courts may use a reasonable royalty criterion, and may also consider the infringer’s profits. Damage is not presumed: the claimant must prove the existence of harm and provide a basis for quantification.

Criminal Remedies

Criminal sanctions are available for several copyright offences, especially unauthorised reproduction, distribution or commercial exploitation for profit, software and database piracy, and circumvention of technological protection measures. Sanctions may include fines and imprisonment, depending on the offence.

Courts assess substantial copying by asking whether the later work reproduces the original work’s creative expression in a way that is recognisable and qualitatively significant. The analysis is qualitative rather than purely quantitative: copying a small portion may be infringing if that portion embodies original creative choices.

Non-literal copying may be actionable where the later work appropriates the individualising creative core of the earlier work, even through re-elaboration. Italian case law refers in this context to evolutionary plagiarism, where the second work departs from the first but does not create an autonomous expressive meaning.

There is no infringement where only ideas, themes, styles, methods or general concepts are taken, or where the later work creates a genuine semantic gap and autonomous expressive result.

For software, protection covers the expression of the program, including source code and object code and, in certain circumstances, original structure or organisation. Ideas, algorithms and principles underlying the program are not protected as such.

Collecting societies and independent management entities grant licences, collect remuneration and distribute royalties on behalf of rights holders. SIAE remains the best-known collecting society, but the sector has been liberalised and independent management entities may also operate under the framework implementing Directive 2014/26/EU.

Tariffs are not generally fixed by statute in a single uniform way. Remuneration is determined by reference to the type and economic value of the use, the repertoire involved and the applicable licensing scheme. AGCOM has supervisory powers in relation to collective management compliance and transparency.

Certain uses are subject to statutory remuneration or compulsory management mechanisms, depending on the category of work and use, such as private copying levies and specific broadcasting or retransmission contexts.

Disputes over royalties, tariffs or distribution may be resolved before the ordinary courts. In some areas, mediation or administrative procedures before AGCOM may also be available.

Industrial designs are governed by Articles 31–44 of the IP Code and by EU design law. Utility models are governed by Articles 82–86 of the IP Code. General unfair competition rules may also be relevant where product appearance is imitated in a misleading or unfair manner.

A design protects the appearance of the whole or part of a product resulting from features such as lines, contours, colours, shape, texture, materials or ornamentation. Products include industrial or handicraft items, components of complex products, packaging, get-up, graphic symbols and typefaces, but not computer programs.

Design protection may cover two-dimensional elements, three-dimensional shapes or combinations of both.

Italy does not recognise trade dress as a separate autonomous right. However, the overall appearance of a product or packaging may be protected through registered designs, unregistered Community designs, three-dimensional or other trade marks, copyright and unfair competition, depending on the circumstances and the requirements met.

A registered design must be new and have individual character. Novelty means that no identical design has previously been disclosed, with designs differing only in immaterial details being treated as identical. Individual character means that the design produces on the informed user a different overall impression from earlier designs, taking into account the designer’s degree of freedom.

The design must also be lawful and not contrary to public order or morality. Features dictated solely by technical function are excluded from design protection, as are features that must be reproduced in their exact form and dimensions to allow mechanical connection with another product.

Italian law does not provide a separate national unregistered design right. However, unregistered Community design protection is available at EU level for designs made available to the public in the EU, subject to the conditions set out in EU design law. Product appearance may also be protected through trade marks, copyright or unfair competition where the relevant requirements are satisfied.

Design applications are filed with UIBM, electronically, through Chambers of Commerce or by post. The application must identify the applicant, indicate the product to which the design is applied or incorporated, classify the product under the Locarno Classification and include clear graphical representations, such as drawings, photographs or digital images. Multiple designs may be included in one application where the conditions for multiple filing are met.

The application is normally made publicly available on filing, although deferred publication may be requested for up to 30 months. UIBM carries out an examination mainly on formal and absolute grounds. If objections are raised, the applicant may respond; if the objections are overcome, the design proceeds to registration.

Design filing costs are generally moderate for simple applications, but they vary depending on the number of designs, the filing route and professional assistance.

Protection lasts five years from the filing date and may be renewed for four further five-year periods, up to a maximum of 25 years.

Design infringement occurs where a third party, without consent, makes, offers, places on the market, imports, exports, uses or stocks a product incorporating the protected design, where the product does not produce a different overall impression on the informed user.

For trade dress-like claims, protection is pursued through the right actually relied on, such as design, trade mark, copyright or unfair competition. The applicable infringement test therefore depends on the legal basis invoked.

Remedies include:

• interim and final injunctions;
• seizure;
• description orders;
• withdrawal from the market;
• destruction or assignment of infringing products;
• damages;
• recovery of profits; and
• publication of the decision.

Border measures may also be available against goods suspected of infringing design rights. In addition, disputes concerning design imitation may in some cases be assessed by the ADI Design Jury under its self-regulatory rules.

Design protection does not extend to features of appearance dictated solely by technical function. Courts assess whether the need to achieve a technical result was the only factor determining the feature. The existence of alternative shapes may be relevant, but it is not by itself decisive; the assessment considers the objective circumstances of the design and the designer’s freedom.

Features that must be reproduced in their exact form and dimensions to allow a product to be mechanically connected to or placed in, around or against another product are also excluded, subject to the specific exceptions for modular systems.

Partial designs and components of complex products may be protected if they meet the requirements of novelty and individual character and, for components, remain visible during normal use where visibility is required. A design may be refused or invalidated where the protected features fall within the technical function or interconnection exclusions.

Trade secret protection is governed primarily by Articles 98 and 99 of the IP Code, as amended to implement Directive (EU) 2016/943. The framework is complemented by unfair competition rules in Articles 2598–2600 of the Civil Code and by criminal provisions concerning unlawful disclosure of confidential information and industrial or scientific secrets.

Protectable information may include:

• technical information;
• formulas;
• processes;
• designs;
• software;
• algorithms;
• business plans;
• customer lists;
• pricing strategies;
• research data;
• manufacturing methods; and
• operational know-how.

To qualify as a trade secret, the information must:

• be secret, in the sense that it is not generally known or readily accessible to persons in the relevant sector;
• have commercial value because it is secret; and
• be subject to reasonable measures to keep it confidential.

Information that does not fully satisfy these requirements may still receive protection under contract or unfair competition law, depending on the circumstances.

To maintain trade secret protection, the owner must adopt measures reasonably adequate to preserve secrecy, assessed in light of the nature of the information and the business context.

These measures may include:

• physical measures – restricted access to premises, locked archives or laboratories, visitor controls and secure storage of confidential materials;
• IT measures – password protection, access controls on a need-to-know basis, encryption, secure file-sharing systems, logging and limits on copying or downloading data; and
• legal and organisational measures – NDAs, confidentiality clauses in employment and commercial agreements, internal confidentiality policies, employee training, and obligations to return or delete confidential materials upon termination of the relationship.

Disclosure to employees or third parties does not automatically destroy protection, provided that it is limited, controlled and made under confidentiality obligations. By contrast, uncontrolled disclosure, or disclosure to persons not bound by confidentiality duties, may undermine the secrecy requirement and therefore affect trade secret protection.

Misappropriation includes the unlawful acquisition, use or disclosure of trade secrets without the holder’s consent. Acquisition is unlawful where it results from unauthorised access, copying, appropriation or any conduct contrary to honest commercial practices. Use or disclosure is unlawful where the person knew, or should have known, that the information was obtained unlawfully or was subject to confidentiality duties.

Liability may also extend to indirect recipients who use or disclose information obtained from a third party when they knew, or should have known, that the third party had acted unlawfully.

In employment disputes, Article 2105 of the Civil Code imposes a duty of loyalty on employees, including duties not to disclose or misuse the employer’s confidential information. Similar issues arise in joint ventures, collaborations and competitor disputes, where the key questions are the source of the information, the scope of contractual restrictions and whether reasonable secrecy measures were in place.

Serious conduct, including industrial espionage or unlawful disclosure of industrial or scientific secrets, may also give rise to criminal liability pursuant to Articles 621–623 of the Criminal Code.

Trade secret protection has no fixed term. It lasts as long as the information continues to satisfy the statutory requirements, particularly secrecy and commercial value arising from that secrecy. Protection is lost where the information becomes generally known or readily accessible to the relevant sector. Accidental or unauthorised disclosure may therefore jeopardise protection if it results in the information entering the public domain.

Authorised disclosure does not destroy protection where it is made under confidentiality restrictions and secrecy is effectively maintained. In the event of accidental or unauthorised disclosure, the holder should act promptly to contain the disclosure, secure or retrieve materials, enforce confidentiality obligations and, where necessary, seek urgent court measures.

Civil remedies include:

• interim and final injunctions;
• orders prohibiting use or disclosure;
• seizure;
• recall;
• removal from the market;
• destruction of infringing goods and documents;
• corrective measures; and
• periodic penalties for non-compliance.

Damages may be calculated by reference to lost profits, reasonable royalties or, where appropriate, the infringer’s profits.

Criminal sanctions are available in serious cases under provisions of the Criminal Code dealing with unlawful disclosure or use of confidential information and industrial or scientific secrets. Non-compliance with judicial measures may also attract sanctions.

Confidentiality during litigation is protected by Article 121-ter of the IP Code. Courts may restrict access to documents, hearings and records, limit disclosure to selected individuals, and prohibit parties, lawyers, experts, witnesses and other participants from using or disclosing trade secrets obtained in the proceedings, even after the case has ended.

Italian law does not provide a single statutory definition of know-how. In practice, know-how is understood as technical, commercial or organisational knowledge and experience capable of conferring a competitive advantage.

Know-how is broader than trade secrets. If it is secret, commercially valuable and subject to reasonable confidentiality measures, it is protected as a trade secret under Articles 98 and 99 of the IP Code.

Even where these requirements are not met, misappropriation of know-how may still be challenged under unfair competition rules, particularly Article 2598, No 3 of the Civil Code. In any event, protection can and should also be reinforced contractually, through confidentiality obligations and specific know-how provisions.

Protectable know-how commonly includes:

• manufacturing methods;
• technical processes;
• formulas;
• engineering data;
• algorithms;
• software documentation;
• testing protocols;
• product specifications;
• quality control procedures;
• customer lists;
• commercial strategies; and
• organised databases or operational information.

If know-how is protected as a trade secret, it must satisfy the requirements of secrecy, commercial value arising from secrecy and reasonable confidentiality measures, as set forth in in 5.1 Legal Framework and Protectable Information. Novelty in the patent sense is not required.

If those requirements are not fully met, know-how may still be contractually protected, but enforcement will depend on the scope and clarity of the relevant contractual obligations. There is case law recognising that know-how which does not meet the requirements of a trade secret may nonetheless be protected against misappropriation under the rules on unfair competition, pursuant to Article 2598, No 3 of the Civil Code.

Know-how created by employees in the course of employment is generally treated as belonging to, or being usable by, the employer where it forms part of the employer’s organisation, confidential information or business processes. Employees may retain and use their general professional skills and experience, but they may not disclose or exploit the employer’s confidential know-how or trade secrets to the employer’s detriment.

Employees are subject to statutory duties of loyalty and confidentiality, as described in 5.3 Misappropriation of Trade Secrets. These duties may continue after termination where the information remains confidential or where specific contractual obligations apply.

For contractors, consultants and joint development partners, ownership and use rights should be expressly regulated in the agreement. In the absence of clear clauses, disputes often turn on who created the know-how, who funded or directed the work, what materials were exchanged and what confidentiality restrictions were agreed.

Know-how is commonly protected through NDAs, confidentiality clauses, non-use obligations, access controls, return or destruction obligations, audit rights and clauses restricting disclosure to employees, affiliates or advisers on a need-to-know basis.

In collaboration, R&D, licence and supply agreements, parties typically:

• define background know-how and foreground know-how;
• allocate ownership of newly developed information;
• regulate permitted use; and
• impose confidentiality obligations surviving termination.

Post-contractual non-compete or non-solicitation clauses may also be used, particularly in employment or consultancy relationships, but they must comply with the limits imposed by Italian law, including requirements of duration, scope, territory and consideration, where applicable.

Know-how may be assigned or licensed separately from patents, trade secrets or other IP rights, although in practice it is often transferred or licensed together with technology, patents, software or technical assistance.

No registration, notarisation or specific statutory formality is generally required for know-how licences or assignments. However, written agreements are essential to define the subject matter, permitted uses, confidentiality obligations, duration, territory, exclusivity, sublicensing, consideration and consequences of termination.

Because know-how can be difficult to identify, contracts should describe it as precisely as possible, often through schedules, technical annexes, data packages, drawings, manuals or handover reports. Proper documentation also helps prove the existence, scope and transfer of the know-how if disputes arise.

Reverse engineering is generally lawful where information is obtained by observing, studying, disassembling or testing a product that has been lawfully acquired and is publicly available or otherwise lawfully in the recipient’s possession.

However, information may remain protectable where it is not readily accessible and its extraction requires significant effort, expertise or unlawful conduct. Reverse engineering does not justify breach of confidentiality duties, unauthorised access, copying of protected materials or circumvention of legal restrictions.

Contractual clauses prohibiting or limiting reverse engineering are commonly used and may be enforceable, subject to mandatory rules and competition law limits. For software, statutory exceptions must be considered, including those relating to interoperability and lawful use.

Italy recognises both copyright protection for original databases and the sui generis database right. A database is protected by copyright where the selection or arrangement of its contents reflects the author’s intellectual creation. The sui generis right protects the maker of a database that has made a substantial investment in obtaining, verifying or presenting its contents.

The sui generis right allows the maker to prohibit extraction or re-utilisation of all or a substantial part of the database contents. It does not protect individual data as such. Protection generally lasts 15 years, with a new term possible where substantial new investment results in a substantial change to the database.

Datasets may also be protected by contract, access terms, technological measures and trade secret law where the relevant requirements are met.

Scraping and data extraction must be assessed in light of copyright, database rights, contract, trade secrets, data protection and unfair competition. Text and data mining (TDM) exceptions may apply where the user has lawful access and, for broader commercial TDM, where the rights holder has not validly reserved its rights.

Italian law follows an anthropocentric approach to authorship and inventorship, in that copyright protection requires a human creative contribution. Law No 132/2025 amended the Copyright Law to refer to works of the human intellect and to works created with the assistance of AI tools, provided they are the result of the author’s intellectual work.

Purely AI-generated outputs with no human creative contribution are therefore unlikely to be protected by copyright. Where AI is used as a tool, authorship will depend on the extent and nature of the human choices made in conceiving, selecting, prompting, arranging or refining the output.

AI systems cannot be named as inventors for patent purposes. The prevailing approach, consistent with the EPO’s DABUS decisions, is that the inventor must be a natural person. In AI-assisted inventions, inventorship is attributed to the individual(s) who made the relevant inventive contribution.

Businesses usually address ownership of AI-assisted outputs through contracts, internal policies, employee invention rules, assignment clauses and warranties concerning training data and third-party rights.

Using copyrighted works or protected databases in AI training may raise risks relating to reproduction, extraction, communication to the public, technological protection measures and breach of licence terms. The risk increases where the user lacks lawful access or ignores a valid rights reservation, or where outputs reproduce protected expression.

Trade secret risks arise where confidential technical or business information is included in datasets without authorisation, or where model outputs disclose or make it possible to infer protected information.

Italian law implements the EU text and data mining exceptions in Articles 70-ter and 70-quater of the Copyright Law. Article 70-ter covers TDM for scientific research under specific conditions, while Article 70-quater permits broader TDM, including commercial uses, where the user has lawful access and the rights holder has not reserved its rights in an appropriate manner. Law No 132/2025 added Article 70-septies, confirming that reproductions and extractions for AI systems, including generative AI, are permitted only in accordance with those TDM rules.

Enforcement may include:

• injunctions;
• evidence-gathering measures;
• disclosure orders;
• damages; and
• in serious cases, criminal sanctions introduced for certain TDM violations.

Infringers using generative AI tools may be pursued through the ordinary civil and criminal mechanisms available for IP infringement, including:

• injunctions;
• description orders;
• seizure;
• disclosure;
• damages; and
• orders against intermediaries where the legal requirements are met.

Law No 132/2025 introduced additional AI-related provisions. It amended the Copyright Law to address AI-assisted works and TDM, added a criminal offence for the unlawful dissemination of AI-generated or AI-altered images, videos or voices that cause unjust harm and are capable of misleading as to authenticity, and introduced criminal sanctions for certain TDM violations.

Evidence and causation remain challenging. In the absence of a special AI-specific civil liability presumption, Italian courts apply ordinary rules: the claimant must prove the protected right, the infringing act, the damage and the causal link. Technical evidence, expert reports, disclosure requests and preservation orders are therefore important.

Platforms and tool providers may face liability depending on their role, knowledge, control over the infringing activity, contractual commitments and compliance with applicable digital services, consumer, product safety and AI rules. Secondary liability is not automatic and is assessed on a case-by-case basis.

The choice of protection depends on the subject matter, the business objective and how the asset will be exploited.

Patents are preferable where the invention can be reverse-engineered, where strong exclusive rights are needed, or where protection is important for investment, licensing or enforcement. The disadvantages are cost, time, disclosure and a limited term.

Trade secrets are preferable where the information can realistically be kept confidential, where the value lies in know-how or processes not visible from the marketed product, or where indefinite protection is commercially important. The disadvantages are vulnerability to independent discovery, lawful reverse engineering and accidental disclosure.

Other regimes may be more suitable for other aspects of the same product: trade marks for branding, designs for appearance, copyright for creative expression, and unfair competition for misleading or parasitic conduct. In practice, businesses often combine several layers of protection.

Italian law permits cumulative protection where the same subject matter satisfies the requirements of more than one IP regime. A product shape, for example, may be protected as a design, as a three-dimensional trade mark and, in appropriate cases, by copyright or unfair competition.

Each right is assessed independently. The fact that one form of protection exists does not automatically establish another. A design must be new and have individual character; a trade mark must function as an indicator of origin and not fall within absolute exclusions; copyright requires originality; and trade secret protection requires secrecy and reasonable confidentiality measures.

Overlapping protection cannot be used to bypass exclusions. Functional or technically necessary features cannot be monopolised through design or trade mark law merely by invoking another label. Courts therefore assess each right separately while ensuring that cumulative enforcement does not lead to unjustified overprotection or distort competition.

Confidential know-how and technical information may be protected as trade secrets before, during and after a patent application, provided that the information remains secret, commercially valuable because of its secrecy and subject to reasonable confidentiality measures.

Filing a patent application does not immediately destroy secrecy for information that remains unpublished. However, once the application is published, the disclosed technical information enters the public domain and can no longer be protected as a trade secret. For this reason, applicants often decide carefully what to disclose in the patent and what to retain as confidential know-how.

Trade secret protection may survive patent expiry or invalidation only for information not disclosed in the patent or otherwise made public. Ancillary know-how, manufacturing tolerances, process parameters, data or improvements kept confidential may therefore remain protected independently of the patent.

If a third party later patents similar subject matter, a prior user may in some cases rely on prior use rights within the limits set by law.

Trade marks protect signs that distinguish the commercial origin of goods or services. Industrial designs protect the appearance of a product, such as shape, lines, contours, colours, texture, materials or ornamentation, provided that the design is new and has individual character.

Trade dress is not an autonomous category under Italian law. The overall look and feel of a product, packaging or store layout may nevertheless be protected through trade mark, design, copyright and unfair competition rules where the relevant requirements are met.

Product shapes and packaging may be protected simultaneously as trade marks and designs. The main limits are distinctiveness, functionality and technical necessity. A shape cannot be registered as a trade mark if it results from the nature of the goods, is necessary to obtain a technical result, or gives substantial value to the goods. Similarly, design protection does not cover features dictated solely by technical function.

A sign consisting of a work of authorship may be registered as a trade mark.

A company logo, for example, may function as a trade mark – enabling consumers to identify the commercial origin of goods or services – while its creative aspects may simultaneously be protected by copyright, provided the design demonstrates sufficient originality.

Cumulative protection is established on a case-by-case basis, and Italian courts assessing combined claims involving both copyright and trade mark rights apply each set of rules autonomously, subject to the respective thresholds and limitations.

Claims based on different IP rights may be brought in the same proceedings where there is a connection between the claims and the court has jurisdiction. It is common, for example, to combine trade mark, design, copyright, unfair competition and trade secret claims in disputes concerning the same product or conduct.

Where multiple infringements are established, courts may grant co-ordinated remedies such as:

• injunctions;
• seizure;
• withdrawal from the market;
• destruction;
• publication of the decision; and
• damages.

The scope of the injunction may reflect all rights infringed, while damages are assessed on the basis of the actual harm suffered.

Double recovery is not permitted. The claimant may rely on multiple legal bases (concurso formale), but cannot obtain more than one compensation for the same loss. Courts therefore avoid duplication by assessing damages globally or by allocating distinct heads of loss where they are genuinely separate.

Cross-border IP disputes are managed through EU and international private international law rules, especially the Brussels I Recast Regulation on jurisdiction and recognition of judgments and the Rome II Regulation on non-contractual obligations. The territorial nature of IP rights remains central.

As a general rule, infringement actions may be brought before the courts of the defendant’s domicile or, in certain cases, before the courts of the place where the harmful event occurred or may occur. For registered rights, validity and registration issues fall within the exclusive jurisdiction of the courts of the state where the right is registered. This distinction is particularly important where infringement and invalidity arguments are raised together.

EU unitary rights, such as EU trade marks and Community designs, have specific jurisdictional rules and may allow remedies with EU-wide effect. For European patents and unitary patents, the UPC may have jurisdiction where applicable.

Parallel proceedings are managed through lis pendens and related-action rules. Italian courts may stay or decline proceedings where another competent court is already seized of the same or a closely connected dispute.