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THE EUROPEAN COMMISSION PRESENTS THE EU REGULATION PROPOSAL ON THE SO CALLED “E-PRIVACY”.

28/03/2017

On January 10, 2017, the European Commission sent to the EU Parliament the proposal for the EU Regulation concerning the protection of personal data in electronic communications. Such proposal, which is part of the “Strategy for a Unified Digital Market” recently promoted by the EU institutions in order to enhance the public confidence in digital services and in their safety, constitutes a lex specialis of the new EU Regulation no. 679/2016 on privacy and will complete the rules concerning the protection of the information included in electronic communications and having the character of “personal data”. If approved, the new regulation will repeal the EU Directive 2002/58/CE concerning the processing of personal data and the protection of privacy in the sector of electronic communications.


 

The aim of the Regulation is to adapt the current European legal framework to the latest developments in the field of electronic communications, especially after the spread in the market of new models of communication and messaging, so-called “Over the top”, such as Facebook, Skype and WhatsApp.

The main innovations contained in the regulation proposal are: i) the provision of stricter rules for the processing, by electronic communication providers, of the data contained in electronic communications: the provider will in fact be obliged to remove or otherwise anonymize such data once the recipient of the communication has received its content (art. 7); ii) the simplification of the rules on “cookies”: the user’s consent won’t in fact be necessary anymore for the saving, among others, of cookies necessary to measure the number of website visitors or of cookies that are required to guarantee the website’s functionality in favour of the user (eg. storage of items in a shopping cart of an e-commerce website) (art. 8); iii) the provision of stronger guarantees for the users of so-called interpersonal communication services based on a number (eg. mobile telephony services): the providers of such services will be required to make available to the user services that enable the generalized block of anonymous calls or of calls coming from specific numbers (art. 12 and 14).

According to the legislative procedure for the approval of EU regulations, this proposal of regulation, in order to acquire force of law and to become directly applicable in all Member States, must now be approved by both the European Parliament and the EU Council. The aim is to let the Regulation enter into force on 25 May 2018, together with EU Regulation on privacy.


FAVOURABLE TAX REGIME PROVIDED UNDER PATENT BOX DECREE ALSO APPLIES TO SOFTWARE UPDATES

14/03/2017

With resolution no. 28/E the Agency responds affirmatively with regard to a query put forward by a computer software company concerning the possibility of applying the favourable tax regime provided under the Patent Box Decree to incomes deriving from activities involving the concession of use of the product, where such activities involve implementation, update, personalization and customization of the software, considering that the norm compulsorily requires the undertaking of research and development activities.


 

Article 1, paras 37 to 45, of the Law of 23 December 2014, no. 190 (so-called “Financial Act 2015”) provides for an optional favourable tax regime (so-called “Patent Box”) for incomes deriving from use of “software protected by copyright, patents, trademarks, designs and models, as well as processes, formulae and information concerning experience acquired in the industrial, commercial or scientific field that are legally protected” with the objective of incentivizing investments in the fields of research and development. This optional regime is regulated by Decree of the Minister for Economic Development, in concert with the Ministry for Economic Development and Finances of 30 July 2015 (so-called “Patent Box Decree”).

A company specialized in software development asked the Italian Revenue Agency for clarifications with regard to the proper identification of activities that may considered favourably from a tax standpoint; in particular, the applicant asked whether it is correct to consider subject to said favourable tax regime the activities involving initial licensing, assistance and maintenance fees, realization of so-called modifications of application software developed by the above mentioned company and registered at the Special Public Register for Computer Programmes held at the SIAE.

The Revenue Agency clarified that software protected by copyright is one of the immaterial assets which allow companies to benefit from the optional favourable tax regime. That includes all computer programs in whichever form they are expressed as long they are the original product of the intellectual creation of the author. Secondly, the Agency confirmed that the activity involving concession of use of the right to utilize immaterial assets is subject to the aforementioned regime; on this point, the Agency emphasized that in order to accede to that regime, in compliance with the so-called “nexus approach”, the company must undertake activities of development, maintenance and enrichment of the software concretely carried out via the implementation, update, personalization and customization of the software. The Agency also specified that activities like staff training, basic help desk of so-called “second level”, telephone support, the periodic fee for use of application software in the cloud, etc. – which involve a purely instrumental use of the software, that fall outside the scope of its protection – do not fall within the favourable tax regime in so far as they do not represent an exclusive use of authorial prerogative.

PAYMENT OF COMPENSATION IN CASES OF UNLAWFUL ANTITRUST DAMAGE: ENACTMENT OF THE NEW LEGISLATIVE DECREE N. 3/2017

08/03/2017

On 3 February 2017 the new legislative decree no. 3/2017 came into force. The new decree implements directive 2014/104/EU and regulates claims for compensation in cases of infringement of the right to fair competition caused by a company or an association of companies. The decree introduces new and relevant elements with regard to the procedural requirement of legitimacy to commence proceedings, the payable damages, the efficacy of the AGCM decision and territorial competence.


 

By means of decree no. 3/2017, a new set of rules has been introduced which, both with regard to the substantive and procedural law, regulates claims for payment of compensation in cases of infringement of the laws on fair competition.

To begin with, the decree regulates “the right to compensation in favour of whosoever has suffered damage deriving from an infringement of the right to fair competition”. Included within that definition – in accordance with art. 2 of the decree – are articles 101 and 102 of the Treaty on the Functioning of the European Union and articles 2, 3 and 4 of Law no. 287/1990 (concerning unlawful agreements and abuse of a dominant position), as well as any other provision, national or European, aimed at achieving the same objectives established for the above mentioned norms.

Proceedings may be commenced by any person, natural or legal, or entity without legal personality, who has suffered damage caused by an infringement of the right to fair competition. More precisely, legitimacy to commence proceedings will be accorded both to the direct and indirect acquirers of the author of the infringement. The decree, therefore, implements the principles providing for a wide legitimacy to commence proceedings, which has already been recognised by European case law.

With regard to the claim for compensation, the decree clarifies that, firstly, it includes actual damage, loss of profits and interests, but excludes so-called punitive damages which exist in certain Anglo-Saxon jurisdictions. The decree also provides that compensation must be determined on the basis of arts. 1223, 1226 and 1227 of the civil code. In this regard, the following should be observed: i) the judge may ask for assistance from AGCM by formulating specific requests concerning the tendencies followed in cases of quantification of damages; ii) the judge may also ask for assistance on the issue of existence of the damage caused by an infringement of the right to fair competition, where said infringement involves a cartel.

The rules on the order of exhibition are also particularly relevant. They seek to overcome information asymmetry which is the main impediment for the obtainment of compensation by parties that have suffered antitrust damages. Upon petition filed by the parties, the judge may order the exhibition of evidence that he or she considers relevant not only to the parties concerned as well as to other third parties, but also to the competition authority (with regard to evidence contained in the file of the proceedings). The judge may proceed in such way with reference to the competition authority only in a residual case, that is when neither the parties nor the third parties can reasonably provide evidence, and provided that the order is considered proportionate.

An additional and important novelty is represented by the evidentiary efficacy of the decisions taken by the competition authority, which have already been considered by the case law. Pursuant to art. 7 of the decree, the infringement of the right to fair competition can be considered definitively ascertained, with respect to the author, when it has formed object of a decision of the AGCM that has become definitive. Such ascertainment is binding with regard to the nature of the violation and its extent, although issues related to the causal link and existence of the damage are excluded, as they will need to be proven by the claimant and ascertained by the court.

In that regard, finally, said proceedings will fall within the non-derogable competence of the Intellectual Property Divisions and will be dealt with exclusively by the courts of Milan, Rome and Naples.

ITALY RATIFIES THE AGREEMENT ON THE UNIFIED PATENT COURT

22/02/2017

On 10 February 2017 Italy ratified the agreement on the Unified Patent Court (UPC) thus becoming the twelfth Member States to ratify the agreement introducing a new system for European Patents. As of now he Agreement has already been ratified by Austria, Belgium, Bulgaria, Denmark, France, Luxembourg, the Netherlands, Portugal, Sweden and Finland. In order for the Court to become operational it is necessary that the agreement be ratified by thirteen States, including France, Germany and the United Kingdom. While ratification by France has already occurred and that of Germany appears to be a mere formality, the relations between the United Kingdom and the new Court will be more complex as a result of the Brexit vote.


 

With law no. 214 of 3 November 2016, conferring authorization on the Italian President Mr. Mattarella to ratify the agreement, new substantive measures have been introduced in our patent system, which concern the very core of patent protection and especially protection against so-called “indirect infringements”: the new 2bis paragraph of art. 66 of Legislative Decree no. 30/2005 now expressly recognises that the patent owner has the right to “prevent third parties … from supplying or offering to parties who lack the right of utilization of the patented invention the means connected to an essential element of that invention which is deemed necessary for its implementation within the territory of a State where the invention is protected, if the third party is aware of the suitability and destination of said means or should be aware whilst exercising ordinary diligence”.

It must be emphasised that indirect infringement does not necessarily require positive knowledge of the destination whereas it is enough that the third party “should have it whilst exercising ordinary diligence”. There is no indirect infringement “when the means are formed by products that are currently on the market, unless the third party does not induce the party to whom the means are supplied into committing” an infringement of the patent (as defined by the norm under consideration).

It must be noted that the provision makes no distinction between national and European patents, so that the above described principles will apply for both categories and the alterations of the substantive law will also apply to national patents.

Last month, the Justice Minister Mr. Andrea Orlando had identified a building in via San Barnaba 50 in Milan as the local headquarters of the Unified Patent Court. With the agreement now ratified, a further important step was taken towards a new patent system.

PRIVACY – ON OCTOBER 1, 2016, THE NEW CODE OF CONDUCT FOR THE PROCESSING OF PERSONAL DATA CARRIED OUT FOR COMMERCIAL INFORMATION PURPOSES WILL ENTER INTO FORCE

06/09/2016

From October 1, 2016, the measures called for by the “Code of conduct for the use of personal data carried out for commercial information purposes” will be applicable. The Code of Conduct (available in full at the following link: http://www.garanteprivacy.it/web/guest/home/docweb/-/docweb-display/docweb/4298343) has been promoted by the Italian Data Protection Authority and prepared in cooperation with various associations concerned to the field. 

The new Code is directed to companies that provide information on the commercial reliability of entrepreneurs and managers, and aims at regulating the activities of those entities through a balance between their freedom of economic initiative, on one hand, and the security, individual freedom and dignity of the people whose data are processed, on the other hand. In fact, the data collected and processed by those companies are particularly sensitive, as they refer to the economic and financial position of entrepreneurs. It follows that the incorrect use of databases and invasive analysis tools can cause serious damages to the dignity and privacy of all the people involved.


 

Here are the most significant rules introduced by the Data Protection Authority in the Code of Conduct:

  • Scope: the new Code of Conduct will only apply to commercial information relating to individuals. The Code, in fact, takes over the definition of “personal data” provided for by Article. 4 of the Legislative Decree 196/2003 (“Privacy Code”), which refers to “any information concerning a natural person, identified or identifiable“. It follows that all the commercial information that do not make reference to individuals are freely usable (point 3 of Preamble);
  • Data traceability: in order to create a business information dossier on a manager or an entrepreneur, only the personal data referring to that person – or to people or entities that have or have had legal and/or economical connections with it – can be used (the mentioned connection exists, for instance, when the data subject owns a company through a direct or indirect control of shares) ( 2, par. 3 and 4);
  • Usable data and consent: only the following data can be used: i) data coming from public sources, cognizable by anyone (and thus the information contained in the companies’ register and within balance sheets, real estate deeds, detrimental acts); ii) data extracted from publicly available sources and generally accessible by anyone (such as newspapers, telephone directories, government or control and surveillance agencies’ websites); iii) personal data that the data subject freely decided to communicate to the commercial information provider ( 3, par. 1 and 2). In the cases refered to in points i) and ii) the data may be processed without the consent of the data subject (art. 5);
  • Data processing arrangements: when they collect and keep personal data, the commercial information providers are required to: i) ensure that the acquired information are correct and pertaining to the pursued purpose; ii) take note of the source of the data; iii) keep the data up-to-date ( 3, par. 4);
  • Information to data subjects: for the processing of the above mentioned data the commercial information providers give to the data subject a non-individual information which is released in accordance with simplified modalities compared to than the ordinary ones provided for by art. 13 of Privacy Code. In particular, the information must be released within a portal specifically created by the commercial information providers, in case they have an annual turnover of more than € 300,000.00; within the website of the single commercial information provider, in case its annual turnover is lower than the above mentioned amount ( 4);
  • Time-limits for use and keeping of data: the personal data collected for commercial information purposes may only be kept until they remain knowable and/or published in the public sources where they come from ( 8). As far as concerns detrimental information (such as bankruptcies, insolvency proceedings, mortgages, etc.), Art. 7, par. 4, introduces stricter deadlines (for instance, the information relating to insolvency proceedings normally cannot be used for more than 10 years from the date of opening of the insolvency proceedings itself);
  • Security: all commercial information providers are required to implement appropriate measures in order to ensure the security, integrity and confidentiality of the collected and processed information ( 10);

Entry into force: the new Code of Conduct shall enter into force on October 1, 2016. Therefore, from said date, any processing of personal data with commercial information purposes shall be considered as illicit if it is not compliant to the Code.