The patent
The patent grants the exclusive right to produce and commercialise an object or a system in the country where the patent has been applied for. In Italy there are two types of patent, in addition to which is the registration of the model or design, and they concern solely the shape or the “design” of a product.
[invention]
The invention is the strongest form of protection granted to those plans with a high degree of innovation, and that represent a new and original solution to technical problems. It lasts 20 years from the filing date of the patent application and, as with all the patents, cannot be renewed upon expiry date. The inventions entitled for a patent are: products, productive procedures, vegetable varieties, whereas a patent cannot be granted (art. 45 of the Industrial Property Code or I.P.C.) for “discoveries, scientific theories, mathematical methods, plans, principles and methods of intellectual activities, for games or for commercial activities, elaborator’s programmes, information’s presentations ” per se. Beyond the static legislative definition, in order to understand what can be patentable, an invention requires in depth study and practice, even if, in summary, it is usual to say with a limited definition, that the invention represents an innovative solution to a technical problem, whilst the utility model represents an improved amendment to already existing objects.
[utility model]
The utility model is a kind of patent existing only in Italy and in a few other countries. It is normally granted, even in those Countries which predispose a considerable examination for the inventions, without any kind of test, therefore, it is the easiest to obtain, but also the most difficult to preserve, it lasts 10 years, and it is not renewable. The utility model protects the objects (not the procedures) that represent a modification to existing objects, which will result in a better utilisation or an easier usage of the object itself. Normally it is said that with the utility model the form of a product, which has a specific functionality, is protected.
It’s often difficult choosing between invention and utility model, for this reason the law provides the possibility of performing what is called a “double filing” (art. 84 I.P.C.), meaning a simultaneous filing of the same patent application both as an invention and as a utility model, leaving the Italian Office for Patents and Trademarks to select between the two solutions.
[Filing requirements]
To file a patent application, either for an invention or a utility model, it is not necessary to have a prototype, but it is essential to know how the item or system must be accomplished, by furnishing a description to that effect. Nevertheless you need to comply with these requisites: novelty, originality, industrial applicability, and legality.
[novelty]]
The object of the patent must be absolutely novel, meaning that it must never have been produced or patented elsewhere. The concept of novelty is interpreted in a broad sense and it includes, in the “technical state”, everything made public, in Italy or abroad, before the filing date of the patent application. Most people believe that, to effectively file a patent within a country, it is sufficient that the item has never been patented in that country. Actually that is not true; otherwise it would be sufficient to tour around the world, find the most original solutions, patent them in Italy and enjoy the exclusiveness in our territory by exploiting someone else’s work. If an article has been made or patented, let’s say, in China but not in Italy, this means that anyone in Italy would be able to make it and sell it, but certainly not to patent it: the difference is clear, without the patent there will be free competition, without expecting any monopoly. Even in these circumstances, the person who had the idea to propose in Italy a product existing abroad can reserve his own market niche, even stamping his own mark on the product or contracting exclusive provisions with a likely foreign firm, but these typically are commercial strategies which have got nothing directly to do with patents.
[Originality or inventive step]
This exists every time the invention definitely proves different from the state of the art in respect to the opinion of an expert in the sector. Generally this is said about the non-obvious evidence of the found solution. The “intrinsic” innovation, also called “inventive step”, regards, instead, the interior aspect of the invention which, in order to be patentable, must be non-obvious, though new in the sense we have seen, but it must represent a progress, a step forwarding in the present state of the art. Establishing the time when an object meets this requirement is extremely difficult, also because jurisprudence swings a lot on this matter and often, this is the key point which determines the success or defeat in cases relative to the invalidity of a patent.
[Industrial applicability]
Only solutions that can be reproduced at industrial level are patentable, excluding all craft productions or in any case tied to a relevant contribution by the person who has realised it.
[legality]
Patent cannot be granted for object that may offend the morality or be against the law and order, concepts that are constantly developing.
[Who can get a patent]
Both corporations and individuals can take out a patent as it is not necessary to have a V.A.T. registration. A valid patent may lapse and lose its value if not realized within 3 years from the granting of it or within 4 years from the date of the application, if this expires subsequently (art. 70 I.P.C.).
From the 1st January 2006 the fees on the filings and life preservation of the Italian patents, have been abolished.