Author: PGA

PGA Newsletter – 27/04/2020

by PGA PGA No Comments
Copyright infringement: Telegram removes 7 channels

Following the investigation launched by AGCOM concerning certain channels created on the well-known messaging platform “Telegram” through which users send copyright-protected content, Telegram itself removed 7 of the 8 channels reported.
The Authority, in a press release dated 23.04.2020, also pointed out that, also in relation to the violation of Intellectual Property in order to legitimize AGCOM’s direct intervention against Telegram, it would be necessary to amend the primary legislation to allow operators offering information society services in Italy using national numbering resources to be considered established in Italy – with reference to the rights referred to in the article. 4, paragraph 1, letter a) of Legislative Decree no. 70 of 2003.
This rule would allow the Authority to adopt selective removal orders for content uploaded in violation of copyright addressed directly to operators such as Telegram.

EPO: the oral procedure in videoconference is in progress

The European Patent Office has published the decision taken by iys President regarding the pilot project for oral procedure by videoconference before the Opposition Divisions.
The project will be extended to all oral proceedings before the Opposition Divisions.
The pilot project will start on the date of entry into force of the decision (scheduled for May 4, 2020) and will continue until April 30, 2021.

“BREVETTI+”: extended incentives

The Ministry of Economic Development has extended the incentives originally provided for the Brevetti+ tender.
In particular, it is now planned to provide a capital grant of up to 140,000 euros. All this to support the innovative and competitive capacity of SMEs through the enhancement and economic exploitation of patents on the national and international market.

PGA Newsletter – 20/04/2020

by PGA PGA No Comments
Italian Patent and Trademark Office publishes 2019 results

The IPTO has published data on decisions taken in 2019 concerning patents, trademarks and designs. Patent applications exceeded 10,000 for the first time since 2006. Over 65,000 applications for the registration of national trademarks, including renewals and international trademarks designating Italy, were received in 2019.

The new Italian regulation of ambush marketing has been approved

Ambush marketing is the association of a brand to a media event without the consent of the organizers. The case of the Danish forward Nicklas Bendtner is well known. During the Denmark/Portugal match of the 2012 European Football Championship, he showed his briefs under the brand name “Paddy Power”, an Irish online bookmaker company.
In view of the next European Football Championships of 2021, the Italian Government has issued Law Decree no. 16 of 11 March 2020 containing “Urgent provisions for the organization and conduct of the Olympic and Paralympic Winter Games in Milan Cortina 2026 and the ATP Torino 2021-2025 finals, as well as a ban on parasitic advertising”. In particular, the Decree prohibits parasitic advertising activities carried out during sports events or events of national or international importance, if not authorized by the organizers.

COVID-19: further postponement of deadlines for UIBM +4, POC 2020 and Marchi +3 calls

The Ministry of Economic Development recently ordered a further postponement of the terms relating to “Designs +4” (which provide bonuses for services aimed at enhancing the value of registered designs), “POC 2020”. (which finances patent enhancement programs) and “Marchi +3” (a program to facilitate the registration of national trademarks abroad).
Below is a brief description of the new terms.
Designs +4: postponement of the deadline for the submission of applications to 9:00 a.m. on 27 May 2020.
POC 2020: postponement of the deadline for the submission of exploitation programmes to 24:00 on 20 May 2020.
Marchi +3: postponement of the deadline for submission of applications to 9:00 a.m. on 10 June 2020.

EPO: new update on measures taken for COVID-19

The EPO has decided to postpone until further notice the oral proceedings before the Examination and Opposition Divisions until 30 April 2020, unless the examination procedure by videoconference is confirmed. A pilot project for the video-conferencing oral objection procedure will be launched.
All events organized by the EPO in March, April and May are postponed. The organizers will contact the participants on an individual basis and, where possible, inform them of the new dates.

IPTO: further postponement of proceedings deadlines

With the entry into force (9 April 2020) of a new decree, the suspension provided for by the “Cura Italia” decree of all deadlines, including the mandatory ones, relating to administrative proceedings, upon partial or ex officio request, pending on 23 February 2020 or started after that date, was further extended.
In fact, Decree Law no. 23 of 8 April 2020 was published on “Urgent measures concerning access to credit and tax compliance for businesses, special powers in strategic sectors, as well as measures concerning health and work, extension of administrative and procedural deadlines”, which in Article 37 states that “The deadline of 15 April 2020 provided for in paragraphs 1 and 5 of Article 103 of Decree Law no. 18 of 17 March 2020 is extended to 15 May 2020”.

PGA Newsletter – 13/04/2020

by PGA PGA No Comments
Infringement by equivalence: the criteria of the Italian Court of Cassation

By decision no. 2977 published on 7 February 2020, the Italian Court of Cassation carried out a detailed reconstruction of the criteria useful for the assessment of infringement by equivalence.
The decision was taken in a procedure issued by the owner of an Italian patent entitled “Process and plant for the extraction and concentration of tannin from wood and other natural products” and a European patent application relating to the same found.
The main innovation concerns the fact that the Court has chosen to investigate the infringement by applying the German criterion which considers as a symptom of infringement for the equivalents the obviousness or non-originality of the replacement solution adopted by the infringer with respect to the patented solution, taking into account the average knowledge of the technician in the sector. It would therefore not be relevant the variation, even if original, made to a single element of the patented invention, if such variation did not allow to exclude the use, even partial, of the previous patent. Read more

PGA Newsletter – 06/04/2020

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The “BOY LONDON” trademark has been declared invalid: it is contrary to morality

By Decision No 20 461 C, the Cancellation Division of the EUIPO declared the trademark “BOY LONDON” invalid as it evokes Nazi symbolism and it is therefore contrary to morality for the purposes of Article 7(1)(f) RMUE.
The trademark contained a graphic component representing an eagle which, according to EUIPO, strongly resembles the emblem of the German National Socialist Party. Read more

PGA Newsletter – 30/03/2020

by PGA PGA No Comments
Satispay vs. Sisal Pay: copyright and parasitic competition

The Court of Milan was called to rule on the legal protection of software programs. In particular, the company that owns “Satispay” acted against “Bill Sisal Pay”, claiming the violation of its rights relating to its software, which the other party had allegedly copied. Read more

Pay attention to misleading invoices!

by PGA PGA No Comments

In these days it has emerged that third parties have sent misleading payment requests to trademark, design and patent rights holders, as they appear to have been issued by the Italian Patent and Trademark Office.

The office has already reported the fact to the competent authorities:

This serious fact joins the already numerous misleading payment requests and invoices that are sent to industrial property rights holders using logos and names that create confusion with the names and logos of other offices, such as the European Union Office EUIPO and the International Office WIPO.

We invite you to pay the utmost attention, not to proceed with any payment and to forward us a copy of the requests received for our verification and possible reporting to the competent offices and authorities.

PGA 10 years anniversary

by PGA PGA No Comments

Ten years have passed since PGA was founded on 24 June 2009. Since then, the company has never stopped growing, with an enviable rate for the market sector in which it operates. The forecast for the year 2019 are still growing compared to the excellent results already obtained in 2018. Read more

Dr. Cristaldi from PGA speaks at the conference “Overview on patentability requirements of pharma inventions”

by PGA PGA No Comments

On October 2nd 2019, at the headquarters of Italian Industrial Property Consultants Institute, in MILAN, a conference was held entitled: “Overview on World Wide patentability requirements of pharma inventions – with special focus on India Patent Law”.

The conference was organized by a team of consultants specialized in chemical and pharma inventions (CFB group). This group conducted a survey in early 2019 with the aim of gathering information from local correspondents in the major countries of strategic interest for the pharmaceutical sector, concerning the requirements relating to the sufficiency of disclosure of pharmaceutical inventions.

The results of the survey were the subject of a presentation held by Fiorella Cristaldi.