How to file a patent in Italy
Due to the complexity of the issue, it is always advisable to refer to an expert, even if it is possible to proceed with the registration on your own by applying to the competent offices of the Chamber of Commerce, which will supply all the necessary information about the steps to the filing.
In Italy the patents are granted, or refused, without any inquiry on the novelty by the Italian Patent and Trademark Office.
[the description]
In order to file a patent application it is necessary, first of all, to prepare a technical description highlighting the invention’s aim, meaning the technical problem that the invention wants to resolve. The proper description involves a clear explication of the contents of the drawing’s tables, so that it shows what each number indicates and a further elaboration of the constructive characteristics of the invention. In this process the drawing’s tables are very useful, as they must represent in perspective and in some cases even in cross section, the object to be patented, so that each number corresponds to an element that will be marked in the table. The drawings can include only reference numbers, not wording or other signs, in this way, when product’s describing the object, each of the specified components are indicated with the X number on the table, by a second component indicated with the number X2, and so on.
Then it is vital to enter the constructive details and the functioning of the object, explaining how it is made and why it is made in this manner, also the advantages gained by making it in one way rather than in another. It is usually recommended to first express the most innovative aspects extensively, and then to describe better all the finer details step by step.
[the claims]
The part that more attention must be paid to, however, remains the exposition of the “Claims” which represent the elements supporting the patent’s interpretation and the evaluation of its effectiveness. The claims are formulated on “the cascade principle”, meaning that the first one is the most important one, which involves the focus of the invention, whilst the following ones are further specifications of the first one.
[the forms]
Together with the description, the proper form must be completed (A for the invention, U for the utility model) by following the suggested instructions; by entering the name and the address of the applicant and filling in the blank space relative to the elective domicile with the same address (or a different one if you prefer); then the title to be given to the patent, we number the pages of the description and drawing’s tables; we mark the box of either YES or NO relative to the public’s advance accessibility.
[Public’s advanced accessibility]
In order to choose one of the two options it is good to bear in mind that, even though there is a protection from the time of filing the patent application, we have effects on third parties from the moment the application becomes accessible to the public. This means that until then, we cannot take infringement action against third parties because, theoretically, they don’t know the existence of the patent, as it is a secret. Normally a patent application is kept secret for 18 months, but, by asking the public’s advanced accessibility, this becomes public after 90 days, thus resolving this kind of problem. However, maintaining this application secret for a longer period gives considerable advantages, because the competitors will read the text of the application later, and consequently organize themselves accordingly: for this reason the majority of the applications are kept secret for the longest possible time. In this case we can proceed by notifying a copy of the patent application to the infringer or by proposing an application to the Department so that it can become immediately public, and since then make the infringer practices illicit.
[Technical times]
Once the patent application has been submitted, several months will pass on (usually 3, 4 years) before the application will be granted or rejected by the Department, and this does not imply a period of inactivity, but certainly a period of difficulty using the patent. Normally, we hand over, we licence, we produce objects for which the patent application is still pending, but they are still not technically patented. In such a situation we should consider that we could, anyway, proceed against an infringer on the basis of just the public patent application and that, in case it is licensed, it is worthwhile to add a special clause that will prevent any responsibility of the licensee in the case that the patent does not get granted. In this period it is very important to have an expert to follow all the juridical actions that we might have to take, as we step on very thin ground and it is very important to know how to move in this field.
[The foreign patents]
It is also possible to file International patents, Europeans or in individual Foreign countries, but these procedures are more involved, therefore it is advisable to consult a professional on the subject. The costs will depend on a number of factors, therefore there are no standard cost estimates.
[the costs]
From 1st January 2006 the filing and maintenance fees related to the Italian patents have been abolished, therefore the cost of a filing is tied down to the technical difficulty of the invention and to the documentation required to prepare the description. On this site an on-line service is available for the costs evaluation, it is totally free of charge and it allows having an approximate estimate of the expense necessary for the filing.