Trade marks, patents, designs, software, content, databases, know-how and domain names are essential components of a company’s value and competitive strength. Their protection requires a coordinated strategy that takes account of the nature of each asset, the relevant markets, the intended forms of exploitation, ownership of the rights and the risks arising from use by competitors, employees, consultants, suppliers or digital platforms.
Protection does not end with the registration of an intellectual property right. It is necessary to identify protectable assets at an early stage, preserve a complete chain of title, regulate relationships with authors, inventors, researchers and developers, safeguard confidential information and establish contractual and enforcement mechanisms consistent with the company’s business model.
Attorney Alessandro del Ninno advises companies, corporate groups, technology operators, publishers, producers, agencies, brand owners, start-ups, research institutions and professionals on the protection, management, commercial exploitation and enforcement of their principal intellectual and industrial property assets.
The practice integrates the Italian Industrial Property Code, the Italian Copyright Act, European and international legislation on trade marks, patents, designs and geographical indications, trade secret rules, advertising and media regulation, competition law, digital platform regulation and the legal framework applicable to Artificial Intelligence technologies.
The objective is to establish a system in which registered rights, internal procedures, contracts and enforcement actions are aligned with the organisation’s actual commercial requirements and the markets in which it operates.
The engagement may begin with an audit of the organisation’s intangible assets and verification of the relevant ownership rights.
The audit may cover trade marks, inventions, designs, software, content, databases, domain names, confidential information and other results generated through research, development, communications and commercial activities.
The analysis identifies assets that have not yet been protected, registrations requiring renewal or territorial extension, deficiencies in the chain of title, dependencies on third-party licences and risks arising from relationships with employees, directors, consultants, developers, researchers, agencies and commercial partners.
The protection strategy is defined by assessing whether the relevant asset should be protected through patents, trade marks, designs, copyright, trade secret rules or a combination of these instruments. The assessment takes account of registrability, the duration of protection, the need to preserve the confidentiality of the innovation, the relevant territories, costs and the company’s practical ability to enforce its rights.
Policies may also be developed for the management of inventions, creative works, software and confidential information, as well as procedures governing filing, approval, renewal and record-keeping decisions.
Where protection requires technical patent assessments or activities reserved for qualified patent and trade mark attorneys, the legal advice is coordinated with industrial property consultants, patent attorneys and technical experts.
The practice covers the development and protection of word, figurative and three-dimensional marks, logos, slogans, trade names and other signs used to identify the business, its products or its services.
Assistance includes preliminary clearance searches, assessment of distinctiveness and availability, identification of the appropriate classes of goods and services and selection of a national, European Union or international filing strategy.
Protection is calibrated to the company’s existing and planned markets, avoiding both insufficient registrations and territorial or product extensions that are not justified by commercial prospects.
The service includes portfolio management, renewals, recordals, changes of ownership, licensing, trade mark watching and assessment of signs subsequently used or filed by third parties.
In the event of a conflict, assistance may include opposition proceedings, invalidity or revocation actions, appeals, court proceedings and the negotiation of coexistence agreements before the Italian Patent and Trademark Office, EUIPO, WIPO and foreign authorities.
Brand protection may also extend to company names, shop signs, the overall presentation and get-up of products, packaging and conduct amounting to unfair competition or slavish imitation.
For designs, the service includes assessing novelty and individual character, selecting the representations to be filed and choosing between national, European Union and international protection. The reformed European framework for designs also enables protection to extend to forms of visual innovation associated with interfaces, graphic elements, animations and products that are not necessarily embodied in physical objects.
Possible overlaps between registered and unregistered design protection, copyright, shape marks and unfair competition rules are also assessed.
A specific area of the practice concerns geographical indications, designations of origin, statements concerning the place of manufacture and use of “Made in Italy” indications. For craft and industrial products, the advice takes account of the European system established by Regulation (EU) 2023/2411 and the Italian implementing framework introduced by Legislative Decree No. 51 of 2 April 2026.
Attorney Alessandro del Ninno advises on the legal strategy for protecting innovations, establishing ownership and regulating relationships with inventors, researchers, funding bodies and industrial partners.
The preliminary assessment considers whether the innovation should be protected through a patent application, a utility model or trade secrecy, taking account of the risks arising from disclosure and the possibility that the technology may interfere with third-party rights.
Prior-art searches, patent landscapes, patentability assessments and freedom-to-operate analyses are coordinated with patent attorneys and technical experts. The legal work focuses on ownership, strategy, contractual arrangements, liability and the management of potential disputes.
The practice may cover national applications, European patents, European patents with unitary effect and international applications under the Patent Cooperation Treaty. For European and unitary patents, the jurisdiction of the Unified Patent Court, litigation strategy and, in relation to traditional European patents, the implications of any opt-out are also considered.
In the software sector, copyright protection for computer programs is distinguished from the patentability of computer-implemented inventions, which requires a technical contribution and compliance with the other applicable patentability requirements.
A specific area concerns inventions created by employees and contractors, including the classification of the invention, ownership, notification duties and any entitlement to fair compensation.
In relationships with universities, public research bodies, Scientific Institutes for Research, Hospitalisation and Healthcare, spin-offs and industrial partners, the service addresses ownership of results, research funding, filing rights, scientific publications, commercial exploitation and access to the knowledge required to continue the project. Commissioned research arrangements are assessed under Article 65 of the Italian Industrial Property Code and the applicable guidelines.
The service also covers pre-filing confidentiality agreements, research and development agreements, licences, assignments, joint-ownership arrangements and provisions governing improvements.
Where relevant, advice may extend to the European framework on compulsory licensing for crisis management, protecting the position of the rights holder, licensee or undertaking seeking access to the technology.
The practice covers literary, scientific, musical, photographic, artistic and audiovisual works, software, databases, websites, editorial content, advertising materials and multimedia productions.
Assistance includes verifying authorship, originality and chain of title, distinguishing moral rights from economic exploitation rights and managing contributions created by employees, contractors, developers and suppliers.
Publishing, production, distribution, synchronisation, adaptation, translation, licensing, assignment, commissioned-work, image-rights and platform exploitation agreements are drafted and negotiated.
For software and databases, the analysis covers ownership of source code, documentation, pre-existing components, open-source licences, customisations, interoperability and rights in the data and content incorporated into the relevant product.
The practice takes account of the European copyright framework for the Digital Single Market, including text and data mining, the rights of press publishers, the use of protected content by platforms and obligations arising in relationships with authors and performers.
Assistance may also include dealings with SIAE, SCF, Nuovo IMAIE, collective management organisations and independent management entities, as well as online copyright enforcement and takedown procedures.
An increasingly important part of the practice concerns the use of Artificial Intelligence. The rights required to use text, images, music, audiovisual works, software, databases and datasets for training, fine-tuning and operating AI systems are assessed.
The advice covers text and data mining exceptions, reservations made by rights holders, licensing arrangements, platform terms and technical measures used to express or comply with opt-outs.
For content generated or modified through AI, the assessment addresses the extent of human creative contribution, ownership, chain of title, the risk of reproducing or imitating third-party works or signs and the conditions governing commercial use of outputs.
Contracts with providers and developers regulate data provenance, use of inputs and outputs, reuse of content for training, warranties against third-party claims and the allocation of liability.
Know-how and business information may qualify for protection as trade secrets where they are genuinely confidential, have commercial value because they are secret and are subject to reasonable measures designed to preserve their secrecy.
Protection therefore does not arise merely from labelling information “confidential”; it requires a coherent system of contractual, organisational and technical safeguards.
Attorney Alessandro del Ninno advises on mapping the organisation’s information assets, classifying information, defining access levels and establishing procedures for creating, retaining, sharing and returning confidential documentation.
The service includes non-disclosure agreements, confidentiality provisions for employees and contractors, onboarding and offboarding procedures, data-room and clean-team rules, and protocols governing disclosure to investors, potential purchasers, customers and commercial partners.
In joint-development projects, pre-existing assets, project results, inventions, improvements, ancillary knowledge and the rights required to use and commercialise the results are clearly distinguished.
Assistance also covers the prevention and enforcement of claims arising from unlawful acquisition, use or disclosure of trade secrets, including cases involving employees, former contractors, competitors and commercial partners.
The commercial exploitation of intellectual property requires agreements that define precisely which rights are granted, for which purposes, in which territories, through which channels and for what duration.
The practice covers licences and assignments of trade marks, patents, software, know-how, designs, content and databases, as well as technology transfer, coexistence, merchandising, franchising, distribution, agency, sponsorship, co-branding and publishing or audiovisual production agreements.
Contracts address exclusivity, territory, fields of use, distribution channels, consideration, royalties, minimum guarantees, reporting, audit rights and sublicensing. They also regulate quality control, approval of materials, brand reputation, improvements, title warranties, third-party claims and the consequences of termination.
Research and development agreements distinguish background IP, project results, independently developed knowledge and the access rights required to perform the activities and commercialise the resulting technology.
Licences and technology transfer arrangements are also reviewed under competition law. Since 1 May 2026, the relevant European framework has been governed by Regulation (EU) 2026/877 and the European Commission’s revised Technology Transfer Guidelines.
Assistance includes assessing market-share thresholds, the competitive relationship between the parties, hardcore restrictions and excluded provisions, as well as conducting an individual assessment of agreements that do not benefit from the block exemption.
Particular attention is paid to territorial restrictions, resale-price restrictions, non-compete obligations, exclusive and cross-licensing arrangements, grant-back provisions, settlement agreements and patent pools.
Domain names should be managed as an integral part of the brand portfolio. Registrations that are not coordinated with the trade mark strategy may result in conflicts, loss of control, portfolio fragmentation and abusive third-party use.
The practice covers the selection of domain names, identification of the country-code and generic extensions to be secured, verification of ownership, dealings with registrars and providers, and the organisation of domain-monitoring services.
Assistance includes registrations, transfers, changes of registrant and transactions arising from business transfers, mergers, demergers, corporate conversions, successions and reorganisations.
In cases involving cybersquatting, domain grabbing, typosquatting, impersonation, phishing or the use of confusingly similar domain names, the service may include cease-and-desist letters, suspension requests, interim proceedings and recovery or reassignment procedures.
For “.it” domain names, opposition and reassignment proceedings may be conducted before Dispute Resolution Service Providers accredited by Registro .it.
For generic top-level domains and country-code domains whose registries provide equivalent procedures, assistance includes proceedings under the Uniform Domain Name Dispute Resolution Policy and other registry-specific mechanisms, including cases administered by the WIPO Arbitration and Mediation Center.
Online brand protection may also extend to usernames, social-media profiles, accounts, applications, advertisements and offers appearing on marketplaces or digital platforms, coordinating trade mark enforcement with notice-and-takedown procedures and judicial remedies.
Attorney Alessandro del Ninno advises companies, publishers, agencies, advertising sales houses, producers, endorsers, creators and influencers on the design and pre-launch clearance of advertising campaigns and commercial communications.
The review addresses the accuracy, truthfulness and substantiation of claims, comparisons with competing products, use of trade marks and images, presentation of prices, promotional conditions and the clear identification of advertising content.
The service covers misleading and comparative advertising, unfair commercial practices, native advertising, product placement, sponsorship, endorsements, influencer marketing, communications directed at minors and campaigns concerning products subject to specific regulatory requirements.
For environmental and sustainability claims, the analysis addresses the precision of the claim, the supporting evidence, the scope of the comparison and the risk of greenwashing. The advice takes account of Italian Legislative Decree No. 30 of 20 February 2026, which implemented Directive (EU) 2024/825 on empowering consumers for the green transition.
The review may concern generic environmental claims, sustainability labels and certification schemes, climate-neutrality claims based on offsetting, durability, repairability, software updates and representations suggesting that benefits relating only to a specific feature apply to the product or undertaking as a whole.
Influencer marketing arrangements are assessed under the Italian Advertising Self-Regulatory Code and the IAP Digital Chart, as well as the guidelines and code of conduct adopted by AGCOM.
Agreements with agencies, endorsers, talent, creators and influencers regulate deliverables, approvals, advertising disclosures, exclusivity, image rights, content ownership, performance metrics, amendments, removal of materials and liability.
The practice also covers proceedings before the Italian Competition Authority, AGCOM, the IAP Review Board and Advertising Standards Jury, as well as disputes between competitors.
The practice covers the prevention and enforcement of infringements of intellectual and industrial property rights.
Assistance may include evidence gathering and preservation, test purchases, cease-and-desist letters, demands to discontinue infringing conduct, online takedown procedures, settlement negotiations and coordination with investigators, technical experts and competent authorities.
Court proceedings may concern infringement, unfair competition, invalidity, revocation, ownership claims, breach of contract and damages.
Available interim and final remedies may include injunctions, seizures, orders for inspection and description, disclosure orders, withdrawal from the market, destruction of infringing goods and publication of the judgment. Where applicable, assistance may extend to criminal proceedings concerning counterfeiting, piracy or copyright infringement.
For cross-border infringements, customs applications for action may be filed to intercept goods suspected of infringing intellectual property rights.
The practice also covers administrative proceedings before the Italian Patent and Trademark Office, EUIPO, WIPO and AGCOM, litigation before the specialised business courts and, where jurisdiction applies, proceedings before the Unified Patent Court.
In acquisitions, investments, financing transactions, joint ventures and corporate reorganisations, due diligence is conducted on the validity, ownership, duration, territorial scope and availability of the relevant assets.
For software and digital products, the review covers source code, documentation, open-source licences, third-party components, rights of employees and contractors, and distribution conditions. For content and media productions, the chain of title required for exploitation in the intended territories, formats and channels is reconstructed.
Identified issues are addressed through conditions precedent, remediation obligations, representations and warranties, indemnities and post-completion actions.
Advice may also be provided on an ongoing basis, supporting General Counsel, Legal, Marketing, R&D, IT, Procurement, HR and product teams in the day-to-day management of the intellectual property portfolio.
The overall objective is to provide companies with specialist legal support capable of identifying, protecting, commercialising and enforcing their intangible assets, coordinating registrations, internal procedures, contracts and litigation in line with the organisation’s actual business requirements.
