Patent

The patent process begins with the filing of the patent application, which in Italy is carried out at the Italian Patent and Trademark Office (UIBM) in Rome and at the peripheral offices in all the provincial Chambers of Commerce.

The text of the patent application essentially consists of the following elements:

a) the summary, which serves as an element of technical information about the object of the invention;
b) the description, which constitutes the text necessary to allow third parties, sufficiently experienced in the particular technical field, to understand and implement the invention; it normally contains examples, possibly drawings, and a brief overview of the state of the known art;
c) the claims, which delimit the scope of patent protection, identifying the technical characteristics of the invention that cannot be implemented by any competitors.

The text of the application can be filed in any language, although it is still necessary to file a translation of the same in Italian within two months of the filing date.

The patent application is made available to the public 18 months after filing (unless the owner requests advance publication).

Until July 1, 2008, Italy was a state of so-called registration, where the content of the patent application did not undergo an examination of technical merit aimed at assessing whether the application met the requirements of industriality, novelty and originality [1] . In the absence of formal findings, the application proceeded until the granting.

Following an agreement stipulated between UIBM and the European Patent Office (EPO), the Italian patent application is now subject to a prior art search [2] with the aim of reporting any previous publications that could in some way deprive of novelty and / or of originality the invention claimed therein. To allow for an exhaustive search, the Italian patent application must be filed together with an English translation of the claims.

The result of the search is sent to the applicant after about 6-9 months from the filing of the application, accompanied by a preliminary patentability opinion. In the event that the opinion is negative, the applicant is invited to modify the claims and / or to submit a letter of reasoning [3] in order to overcome the formal and / or technical objections raised in the aforementioned preliminary opinion. Once any objections have been overcome, the Italian patent is then granted; which normally takes 1-2 years [4]. It is however possible to take legal action against any counterfeiters even on the basis of the Italian patent application alone.

Within 12 months of filing the Italian application, the applicant can evaluate the opportunity to extend protection abroad, filing corresponding patent applications in other states and claiming the “priority right” acquired with the filing of the same; by doing so, such subsequent applications will not be invalidated by any publications occurring in the time interval elapsed from the first filing, and having in some way relevance to the invention claimed therein. This one-year period can therefore be used to conduct new trials and / or verify whether the market justifies the filing of patent applications outside the national territory.

The Italian patent has a duration of twenty years from the filing date of the application.

A patent application for an invention is subject in Italy to the payment of a filing fee. Furthermore, after four years from the filing, the Italian patent is subject to the payment of an annual maintenance fee, until the expiry of the patent. Failure to pay even a single annual fee entails the forfeiture of the patent.

Finally, it must be pointed out that a patent does not automatically confer the right to exploit the invention claimed therein; in fact, the patent only confers the right to prohibit third parties from producing, using, marketing, selling or importing this invention.

[1] Provided not only by Italian law, but also by the patent laws of all industrialized states
[2] Performed by the EPO examiners
[3] Within a period of 3 months from the publication of the application, or within 21 months from the filing date
[4] Calculated from the filing of the response to the preliminary opinion

Italy adheres to the European Patent Convention, which unites most of the European states under the umbrella of a single patent subjected to preventive technical examination. The states adhering to the convention are currently [1] Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Denmark, Estonia, the former republic of Macedonia, Finland, France, Germany, Greece, Ireland, Iceland, Italy, Latvia, Liechtenstein , Lithuania, Luxembourg, Malta, Monaco, Norway, Netherlands, Poland, Portugal, United Kingdom, Czech Republic, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, Hungary [2]; the effects deriving from the European patent can also be extended on request to Bosnia and Herzegovina, Montenegro, Morocco, the Republic of Moldova, Tunisia and Cambodia [3].

The text of the European patent application is substantially consistent with that of an Italian patent application. The main difference concerns the language: the European patent application must in fact be drawn up in one of the three official languages ​​of the Convention, namely English, French and German; also in this case the deposit can be made in any language, including Italian, by following the translation into one of the official languages ​​within two months of the deposit.

In the event that the European patent application claims the “priority” of a previous Italian patent application, the filing can be made both at the UIBM and directly at the EPO, which has offices in Munich and Berlin. and in The Hague; in case of first filing, the European patent application must however necessarily be filed with the UIBM, accompanied by a translation in Italian, in the event that it concerns an invention of potential interest for military defense.

The filing of a European patent application is subject to the payment of a filing fee and a search fee.

As in the case of an Italian patent application, even in the case of a European patent application, the EPO carries out a prior art search, the result of which is sent to the applicant, together with the preliminary patentability opinion, after about 3- 6 months from deposit. Similarly to what happens in Italy, the European procedure also involves carrying out a technical merit examination.

Therefore, in the event that the outcome of the research is encouraging (and there are therefore reasonable opportunities to obtain the granting of the patent), we proceed with the request for the examination of merit and with the payment of the examination and designation fees. states of interest. During the examination phase, the European patent application is evaluated both in form and substance; on this occasion, the EPO may issue one or more notifications containing objections regarding the patentability of the claimed invention. The applicant must respond to these notifications by filing corresponding technical briefs and / or by modifying the claims.

Once the examination phase has been successfully passed, the procedure provides for the payment of the concession fee and the filing of the translation of the claims in the two remaining languages ​​of the Convention [4]. Within three months of granting, the patent must be regularized in the states of effective interest [5], by filing, at the individual national patent offices that request it, the translation of the patent into the local language (currently, the contracting states that do not require filing translation are France, Germany, Ireland, Liechtenstein, Luxembourg, Malta [6], Monaco, United Kingdom and Switzerland [7]; Albania, Croatia, Denmark, Finland, Iceland, Latvia, Lithuania, former Republic of Macedonia, Norway, The Netherlands, Slovenia, Sweden and Hungary [8] only require the filing of the translation of the claims) [9].

The European patent application is published after 18 months from the filing date or from the date of priority claimed. The European patent has a duration of twenty years, date of filing of the application.

Contrary to what happens in Italy, the European procedure entails the possibility for third parties to file an opposition against the granting of a European patent. The opposition can be filed within nine months of granting the patent; the reasons in support of the opposition are essentially the following: the claimed invention is devoid of novelty, originality, insufficiently described and / or extends beyond the content of the original application.

The annual maintenance fees are due from the third year of filing and are paid directly to the EPO until the patent is granted; after which, they must be paid directly to the individual national patent offices of the states in which the patent will have been regularized. Also in this case, failure to pay one or more maintenance fees entails the forfeiture of the patent.

[1] Data updated to 27 December 2018
[2] 38 states
[3] 6 states
[4] Normally French and German
[5] Which may in any case be lower than those originally designated
[6] In case the patent is in English
[7] 9 states
[8] 13 states
[9] Data updated to 27 December 2018

This is a patent that not only has a shorter duration than the one “for invention” (10 years instead of 20) [1] but also and, above all, a more limited scope of protection:, in fact, more than protecting an inventive concept, it protects in very limited terms an improvement made to a machine, product or tool.

In Italy it is subject to the payment of a filing fee and a renewal fee five years after filing.

[1] As regards Italy