Italian patent

Italian patent: to whom is it addressed?

The Italian patent is an essential instrument for those who develop their business mainly in Italy. In fact, through this patent one obtains:

  • the exclusive possibility to produce and sell an innovative product in Italy;
  • the possibility to prevent one from importing identical or similar products;
  • the exclusive possibility to use a specific method in the Italian country.

In addition, the Italian patent can be a valid starting point from which to extend the application abroad, given that:

  • Within 12 months from the filing date of an Italian patent application, it can be extended to any foreign country by claiming the purported “priority”, that is reconnecting to the filing date of the Italian patent application, with important strategic advantages;
  • Within 9 months from the filing date, UIBM (Italian Patent and Trademark Office) provides a detailed search report, because it is carried out by the EPO (European Patent Office), that is essential to decide whether or where to extend the patent application. 

For these reasons, the Italian patent is a very important instrument for business choices and it must not be underestimated.

We examine in depth the procedure to obtain an Italian patent.

  1. The preliminary choices
  2. How to file an Italian patent application
  3. The anticipated accessibility to the public
  4. The grant procedure of the patent
  5. The appeal against the Office’s decisions
  6. Withdrawal and limitation of the application

The preliminary choices

Before filing a patent application, it is necessary to examine thoroughly the invention and establish which is the main feature to be protected and what the possible variants could be. With a patent application only one invention can be protected, therefore it is important to examine the alternative solutions to avoid the possibility that the patent could be easily eluded. In fact, the analysis of variants allows us to not only confer a broad protection which tends to include all variants but, in addition, it can highlight the need to file further patent applications aimed at protecting different features of the invention that cannot be protected with a single patent. It is not certain that a proposed invention can be classified as a single invention but, on the contrary, it could include several inventions. For this reason, a valid preliminary analysis is essential.

It is also important to carry out a novelty search to be sure of the fact that the patent is new. Even if a novelty search is not compulsory, it is always advised. In fact, an internal preliminary search can help to best direct the drafting from the beginning. When the preliminary analysis has been carried out carefully and with the help of the qualified patent consultant, the preparation and filing of the application can be done.

Two types of applications exist:

  1. the invention patent application
  2. the utility model patent application.

In essence, the documents to be prepared are basically the same since in both cases a specific description will have to be drafted, with the attached corresponding technical drawings.

The patent application is filed online through a specific platform accessed by professionals after registration.

How to file an Italian patent application

To file the patent application, it is necessary to fill in a specific form (Form A for inventions, Form U for utility models), in which the information about the applicant, who will become the patent holder, the title of the patent and the name of the inventor must be indicated. The description with the claims and the technical drawings must be attached to the form.

The description

First of all, the description must highlight the technical problem that the invention aims to solve and the advantages that derive from the use of the invention. All the main technical-constructive features of the proposed solution must be described, with the help of the attached drawings. Depending on the type of invention, the functioning or the process, with which a certain result is obtained, will be described.

The claims

The most important part of the patent are the “claims” that have to reproduce, in a specific technical jargon, the elements on which the protection is sought. To understand the importance of the claims, it is enough to consider that in general what is described but not claimed is not an object of protection. The claims are intended to be formulated in a “waterfall-like” way in the sense that the first one is the most important one, which encloses the core of the invention, whereas the subsequent ones are a sort of specification of the first one.

The technical drawings

The technical drawings will also have to be prepared in such a way as to show clearly what is the inventive solution to be protected. Therefore, it is inadvisable to attach too many detailed constructive drawings with sizes and irrelevant particulars.

In fact, another important feature that requires the professional’s intervention is the correct draft length in order not to give excessive details to maintain the company know-how and at the same time describing in a complete and clear way in order not to run into an issue of lack of description.

In order to proceed with the filing, administrative fees and official fees which vary depending on the type of patent must be paid.

Preparing the patent application well is as fundamental as analyzing the invention well before filing it, since on the basis of these preliminary choices the possibility of defending the patent in case of counterfeiting is higher or lower.

This is substantially due to the fact that, once the application has been filed, it cannot be corrected through additions and/or integrations that are strictly limited by specific rules. Thus, it is essential that the application is drafted in the best way from the beginning, to avoid invalidity/indefensibility of the patent and its extensions.

The anticipated accessibility to the public

In the application form for the filing of a patent application, there is a box that allows one to choose the anticipated accessibility to the public rather than keeping the application secret. In order to choose between one of the two options, it is advisable to remember that although protection is obtained as from the moment of the filing of the patent application, the effects towards third parties exist from the moment in which the application is made accessible to the public. This means that up to that moment it will not be possible to act in infringement proceedings towards third parties because, in theory, they will ignore the existence of the patent, which is secret.

Normally, a patent application remains secret for 18 months but by requesting the anticipated accessibility to the public it becomes public after 90 days, thereby addressing this type of problem. Nevertheless, keeping the application secret for a longer time has significant advantages because later competitors will be able to read the text of the application and will be able to get organized consequently. Moreover, the secrecy of the application for 18 months can allow the application to be extended to other foreign countries, during the secrecy period of the application, even if the priority period of 12 months has already expired. In the event of a secret application, if infringement occurs, action can be taken by notifying a copy of the patent application to the infringer.

The grant procedure of the patent

Once the patent application has been filed, an application number and a filing date are obtained, and from that moment the examination of the file starts.

As from 1 July 2008 Italian patent applications undergo a novelty search that is carried out directly by the European Patent Office and sent to the Italian Patent and Trademark Office, which in turn sends it to the applicant. The search is forwarded to the applicant within 9 months from the filing date, together with a communication in which a term is set (which is generally of 21 months from the filing date) to possibly reply to any objections or to “review” the application in the light of any patents found that can jeopardize the granting of the patent.

In this regard, it is worth pointing out that nothing can be added to the patent text since the invention is crystalized as described at the moment of the filing. Nevertheless, the claims can be limited or clarified, still remaining within the limits of what has been originally described.

If after this examination the Italian Patent and Trademark Office considers the patent to be acceptable, it goes through with the grant. Once the patent has been granted, a grant date and a grant number will be assigned to it and the holder will be able to obtain the corresponding grant certificate.

Even if some months are needed before the patent application is accepted or refused by the Ministry, in this period the invention can be implemented and it can also be sold or licenses can be granted in Italy. Action against an infringer can also be taken on the basis of the single public patent application, with the help of an attorney expert in the field to avoid mistakes that could compromise its success.

How long does a patent last? The invention patent has a duration of 20 years that start from the filing date but each year from the fourth-year maintenance fees must be paid to keep it in force. The utility model patent has a duration of 10 years but on expiration of the first five years the maintenance fee must be paid for the second five years.

The appeal against the Office’s decisions

Against the UIBM’s provisions through which the Office refuses, totally or partially, a filed application, it is possible to file an appeal before the Appeal Commission (art. 135 IPC). The Appeal Commission is constituted by magistrates and professors nominated in accordance with a decree of the Ministry of Economic Development. The decisions of the Commission can be contested before the Court of Cassation. Due to this kind of procedure, it is necessary to be represented by an Attorney or by an Industrial Property Consultant, not only because of the particular difficulty of the subject but also because it is provided for by law.

Withdrawal and limitation of the application

At any moment between the filing of the application and the granting of the patent, the applicant who has filed the application can always withdraw it (and therefore renounce it) or limit it, for example by reducing the number of claims. For example, withdrawing or limiting the patent can be necessary when a conflict with a third party that has pre-existing rights arises or when the patent has been kept secret and one wants to avoid its publication. Amendments to the patent application can be made but only within strict limits and without altering or widening the initial scope of protection. A change that is not only allowed but necessary is the one relative to the change of the holder’s address. Changes in the registry, withdrawals and limitations must be communicated to the Office by filing a specific petition for annotation.

Get in touch with our expert

Ing. Mario Emmi

Head of the Patent Department

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