Other IP Rights

Other IP Rights for the protection of intellectual and industrial property

We provide many other services in the IP world, aimed at protecting and safeguarding:

  • new plant varieties, including those resulting from genetic engineering processes;
  • topographies of semiconductor products in the strategic field of microchips;
  • supplementary protection certificates for extending the duration of patents for medicinal drugs and phytopharmaceuticals;
  • geographical indications for agri-food products, collective and certification marks, aimed at safeguarding the quality of products and services.

A new plant variety is a plant variety that is homogeneous, stable, and different from existing varieties, and that is not discovered in the wild, but is the result of human plant breeding efforts. The relevant patent may cover not only the plants and their natural or artificial findings, but also the method of production or use and any mutations.

The protection of plant varieties as a biological product or process (i.e., due essentially to natural phenomena, such as crossing or selection) for the production of new plant varieties, is aimed at protecting plant innovation and incentivizing the creation of new plant varieties.

This is widely used in various commodity sectors, from agribusiness to cosmetics, biotech, and fashion, through a special patent title, recognized to the breeder who created or discovered and developed the variety.

The possibility of protection through the typical invention patent is normatively excluded for plant varieties, animal breeds, and essentially biological processes of animal or plant production, including new plant varieties constituted exclusively in the genetic modification of another plant variety, carried out also through a process of genetic engineering, as well as plant varieties registered in the National Register of Biodiversity of Agricultural and Food Interest.

Plant varieties with the requirements of novelty, distinctiveness, homogeneity, and stability are protected in European countries both at the National and European Union level by resorting to the so-called plant patent, which is granted according to the criteria of the Union Convention for the Protection of New Varieties of Plants (UPOV), adopted in 1961 and administered at the Community level by a special agency, called CPVO.

Plant varieties require

  • a special name, suitable for constituting the generic name of the variety, which is required for registration in the register of varieties;
  • it cannot be registered as a trademark;
  • nor contain geographical names;
  • it must not infringe the rights of third parties, create confusion, or mislead as to the characteristics of the variety.

The plant variety is subjected to crop examinations and varietal trials, generally carried out by the Ministry of Agriculture, Food and Forestry, which issues a binding opinion on the substantive requirements for the validity of the patent.

The exclusive right for a new plant variety has a duration of 20 years at the National level and 25 years at the European Union level, starting from the date of grant. For trees and vines this term is 30 years.

The topography of a semiconductor product consists of a series of interrelated designs, fixed or encoded, resulting from the intellectual effort of their creator and not commonly known in the field industry that may represent the three-dimensional pattern of the layers of which a semiconductor product is composed.

A semiconductor product (e.g., integrated circuit used in microprocessors or microchips) is a finished or intermediate product consisting of a set of materials comprising a layer of semiconductor material containing one or more composite layers of conducting, insulating, or semiconducting material, arranged in a predetermined three-dimensional pattern, intended to perform exclusively or in conjunction with other functions an electronic function.

The object of protection is the three-dimensional structure resulting from the connection of the layers of which a semiconductor product is composed, and not the concepts, processes, systems, techniques, coded information, or software embedded in the topography itself.

The purpose of this particular form of intellectual property right is to prevent microchip or integrated circuit designs, which are the subject of protection, from being used by third parties within products of any and all kinds.

The exclusive right related to the topography lasts for 10 years from the date of filing of the application or from the date of the first commercial exploitation of the topography in any part of the world. The right expires respectively at the end of the calendar year in which the application was filed or the topography was first commercially exploited in any part of the world.

Applications for protection relating to a semiconductor product are subject – like patent applications – to prior examination by the Ministry of Defence, which may request deferment of the grant or grant of the title under terms of secrecy.

The Supplementary Protection Certificate (SPC) allows the extension of the duration of a patent related to a specific medicinal or phytosanitary product. This certificate is granted with the purpose of making up for the time elapsed between the date of submission of the patent application and the marketing authorization of the product. Medicinal or plant protection products, in fact, require a specific marketing authorization (MA), which is granted after a series of checks and controls carried out by competent authorities (i.e., the Italian Medicines Agency (AIFA), the European Medicines Agency (EMA) or the Ministry of Health) on the basis of pre-clinical and clinical studies, as well as chemical and toxicological examinations, in order to ensure their efficacy and safety requirements for human and/or animal health or the environment. Therefore, several years may elapse from the date of filing the patent application to the date of issuance of the first marketing authorization (MA) for the product, with the effect of reducing the duration of the exclusivity right attached to the invention. The certificate is issued to the holder of the basic patent or its successor in title if the basic patent and the marketing authorization for the medicines are in force. The supplementary protection certificate shall have the same effect as the patent and can never be valid for more than 5 years from the expiration of the basic patent.

Pediatric Extension

There is a six-month extension of the duration of the supplementary certificate in relation to medicines used in pediatric area (i.e., pediatric extension), when they undergo specific testing or are part of a specific research and development program.

Generic Medicines and Biosimilars

On July 1, 2019, Regulation (EU) 2019/933 entered into force with the express purpose of promoting the competitiveness of generic and biosimilar medicine industries based in the territory of the EU. This regulation provides certain exceptions to the protection provided by the Supplementary Protection Certificate for medicines, allowing manufacturers based in the territory of the Union to produce generic and biosimilar medicines for the purpose of export to third countries where the original product enjoys no protection or for the purpose of creating, in the six months prior to the expiration of the certificate, a stock intended to be placed on the EU market, immediately after the expiration of the certificate.

Geographical Indications (GIs) protect and promote certain agri-food products, whose peculiar quality characteristics depend mainly on the territory in which they are produced. Geographical Indications (GIs) are distinctive signs that identify those agricultural, food, and wine products, whose qualities and/or characteristics are closely related to the geographical origin of the product.

Geographical indications aim to protect the quality standards of agri-food products, safeguard their production methods, and to provide consumers with clear information about the characteristics that add value to the products.

In view of the characteristics of GI products, which must comply with specific production specifications subject to controls carried out by special bodies, geographical indications take on different names, commonly identified by their acronyms.

PDO – Protected Designation of Origin

This wording identifies a product originating in a place, region or, in exceptional cases, in a particular country, whose qualities or characteristics are due essentially or exclusively to a particular geographical environment and its inherent natural and human factors, and which stages of production all take place in the defined geographical area (i.e., Prosciutto di Parma, Parmigiano Reggiano, Gorgonzola, etc.).

PGI – Protected Geographical Indication

This wording identifies a product, also originating in a particular place, region, or country, whose qualities, reputation, or other characteristics are essentially attributable to the geographical origin, and the production of which takes place for at least one of its stages in the defined geographical area (i.e., Balsamic Vinegar of Modena, Mortadella Bologna, Bresaola della Valtellina, Red Onion of Tropea, etc.).

TSG – Traditional Specialty Guaranteed.

The term identifies those products that, regardless of the geographical area of production, are characterized by composition, specific production methods, and traditional recipes that have existed for at least 30 years (i.e. Mozzarella, Pizza Napoletana and Amatriciana).

TFPs – Traditional Food Products

This term, in Italy, identifies those agri-food products whose processing, preservation, and seasoning methods are consolidated over time, i.e. implemented in the territory concerned, in a homogeneous manner and according to traditional rules and protracted over time for a period of not less than 25 years (i.e. Confetto di Sulmona, Scapece, Lampascioni, ‘Nduja, Friarelli, Cappello del prete, Trofie, Rosa camuna, Sbrisolona, Salsiccia di Bra, etc.).
TFPs are recognized by the regions and contained in periodically updated lists where products are described according to types, such as:

  • non-alcoholic beverages, spirits and liqueurs;
  • fresh meat (and offal) and their preparation;
  • cheeses, fats (butter, margarine and oils);
  • vegetable products in their natural or processed state; products of animal origin;
  • fresh pastries and bakery, biscuit, pastry, and confectionery products;
  • preparation of fish, mollusks, and shellfish, and special techniques for raising them.

A collective mark is a distinctive sign that is intended to distinguish goods or services of several enterprises by their specific origin, including geographical origin, nature, or quality, performing a function of guaranteeing the product or service (i.e., COMIECO, BANCOMAT, etc.).

Legal persons under public law or private entities, such as trade associations or consortia of manufacturers, producers, service providers or traders, who generally do not use the mark directly, can obtain collective trademark registrations.

Joint stock companies (JSCo), Partnership limited by shares (SCA), and Limited Liability Companies (LLC.) cannot register a collective trademark.

The participation in the association must be ensured for all enterprises belonging to the same geographical area, in the event that the collective trademark in the ownership of a trade association consists of a sign indicating the geographical origin of the goods or services.

A collective trademark requires a set of regulations, which are filed together with the trademark application and generally contain an indication of the persons who may use the trademark, the requirements for the goods and services distinguished by the trademark, the conditions of use of the trademark, the manner of control, and the penalties for violating the regulations.

A certification mark is a distinctive sign that is intended to certify certain characteristics of goods and services, in relation to the material, manufacturing process of the goods or performance of the services, quality, accuracy or other characteristics (i.e. Ecolabel, TÜV SÜD, ISO 9000, etc.).

Certification marks may be registered by natural or legal persons, including institutions, authorities and accredited certification bodies, provided that they do not carry out an activity involving the supply of goods or services subject to certification, and in fact the holder of a certification mark has an obligation of neutrality in relation to the interests of the manufacturers of the products or providers of the services it certifies. 

The certification mark necessitates a regulation, which, filed together with the application for the mark, contains the applicant’s declaration that he or she does not engage in any activity involving the supply of certified goods or services, the characteristics of the goods or services marked by the mark, the conditions of use of the mark itself, the methods of control and the penalties for violating the regulation. 

Very importantly to know that an EU certification markcannot be used to certify the geographical origin of goods and services.

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