A request for re-establishment of rights (i.e.restitutio in integrum) shall be filed with the IPTO within two months from the removal of the cause of non compliance, i.e. within two months from the date in which the holder of the right became aware of the loss; however, the request shall be filed within one year of expiry of the unobserved time limit, at the latest. In order to have its rights re-established, the holder will have to prove that all due care required by the circumstances has been taken; in other words, that the party has been diligent and careful. Consequently, in order to file a request for re-establishment of rights, a detailed explanation of the facts that led to the loss of rights is necessary. If, for instance, a renewal fee was not paid in due time, this would include an explanation of how renewal fees are normally handled by the holder; what type of double check is normally performed by the holder to make sure that renewal fees are timely paid; information about the person responsible for renewal fee payment; information about the software (if any) used for handling renewal fees; whether renewal fees are paid by a specialized company and, if so, which one; information about what prevented the holder from paying the due fee.
The on-line IPTO register does not provide information concerning the payment of renewal fees. This type of information must be double-checked by inspecting the IPTO database in Rome. The database, however, frequently provides incomplete information; i.e. it may appear that only some renewal fees have been paid whereas no information is given for the others. This however does not necessarily mean that the remaining annuities have not been paid at all; as a matter of fact, due to the backlog of the IPTO, information concerning annuities is often not timely updated. If one wishes to obtain more reliable information, the two following options are normally available:
The appointed Italian representative may be informally contacted in order to gather some additional information.
A request for an official legal status certificate may be filed with the IPTO; the IPTO will then ask the appointed Italian representative to provide copy of the payment receipts for the missing renewal fees within a given time limit; if such receipts are not filed, the IPTO will declare the patent lapsed. Such a procedure may usually last from 1 to 3 months.
No, according to the Italian law, the recordal of a deed has a declaratory and not a constitutive value.
No, the recordal of a deed is not mandatory in Italy, but highly recommended: as a matter of fact, the recordal renders the deed enforceable against third parties in case of dispute. Furthermore, the recordal of a deed is necessary before the new owner takes any step with respect to the IP right referred to in the deed. In particular, in case of trademarks, the transfer of ownership must, in any case, be recorded before the renewal.
The original deed to be recorded duly signed by the parties; or
A certified copy of the deed to be recorded or a copy of the same; in the latter case, the IPTO may require that the copy of the deed is declared to be in conformity with the original by a notary public or by any other foreign competent authority.
The deed must contain a clear and unambiguous indication of the assigned or licensed rights. Furthermore, it must also indicate the sum that has been paid for such an assignment or license. If the indicated value exceeds about 6500 €, a 3% fee will have to be paid for registering the deed; otherwise a fixed fee of about 200 € will have to be paid. In case of a foreign document, the deed must be signed by the parties, notarized and legalized. Furthermore, it must be translated into Italian and the translation must be sworn. A declaration of occurred assignment, signed by the assignor and by the assignee, may also be filed instead of the deed; in this case, the IPTO may require a copy of the deed to which reference is made and which, in any case, will have to meet the above-indicated requirements.
The original deed to be recorded duly signed by the parties; or
A certified copy of the deed to be recorded; or
The certificate issued by the commercial register or by any other competent foreign authority.
In case of a foreign document, the deed must be signed by the parties, notarized and legalized. Furthermore, it must be translated into Italian and the translation must be sworn.
Yes, in the same petition it is possible to simultaneously record multiple IP rights, provided that they are clearly and unambiguously indicated in the deed to be recorded and that the beneficiary is the same for all IP rights.
Yes, it must be filed a fresh power of attorney signed by the assignee, licensee or beneficiary of the warranty or right of enjoyment.
Two certified copies of the deed to be recorded duly signed by the parties. In case of a foreign document, it must be signed by the parties, notarized and legalized; it must be then translated into Italian and the translation must be sworn.
Starting from 1 January 2021, it is possible to enter the Italian national phase of a PCT application designating Italy.
This will allow PCT applicants to obtain patent protection in Italy more quickly than through the classic EPO procedure, since the average time for obtaining the grant of a patent in Italy is normally about one year.
The term for entering the Italian national phase is 30 months from the priority or filing date of the PCT application; 2-month further processing is however possible, subject to the payment of a fee.
The text of the patent application must be in Italian; the application may nevertheless be filed in the same language of the PCT application, provided the Italian translation is filed within 2 months.
The Italian Patent and Trademark Office will examine the Italian national phase of the PCT application based on the same prior art cited in the search report issued by the competent International Search Authority.
The Italian national phase will be subjected to a fee which is based on the number of claims of the PCT application as published or as amended in accordance to Art. 19 PCT.
Amended claims may nevertheless be filed either at the same time of entering the Italian national phase or during the examination procedure provided, of course, they do not extend beyond the content of the PCT application itself.
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