Filing a patent

Find out how to file a patent correctly.

  1. The meaning of filing a patent
  2. Novelty search
  3. Who can file a patent
  4. How long a patent lasts
  5. In which countries a patent is protected
  6. Priority
  7. The difference between Patented and Patent Pending

Filing a patent application is not so simple and it is highly recommended acting with the help of an expert.
If you don’t want to risk ask now for a free evaluation. One of our experts will answer you.

1

 The meaning of filing a patent

Some preconditions you need to know

A basic element to file a patent application is the preparation of a procedure with a series of documents, whereas it is not allowed to file a prototype of an invention which could also not exist yet.

The invention is patented on the basis of an appropriate description of the project made in accordance with the rules provided by the legislation.

Technical documentation
A too precise description may sometimes be counterproductive especially if the essential technical characteristics, aimed at reach the wanted technical result, are not claimed.

Preliminary evaluation
Before preparing the required documentation, the invention should be thoroughly examine to decide if it is patentable and the best way to protect it.
Not for all inventions, the evaluation is simple. In the case of food, software and all the apparently trivial inventions the description has to be as scrupulous as possible for this very reason.

Once this evaluation is made, the following step is to prepare the technical documentation to be attached to the patent application. The papers should meet the requirements provided by the law and be made in accordance with the guidelines provided by the National Office.

A general description is not enough. The text should include draws permitting to understand not only the object but the invention itself. The documentation should clearly underline the innovative aspects which need to be protected. Here lays the real difficulty.

Even for an engineer expert in a precise field, it could be hard to write a good patent application unless it is the case of patent attorneys.

Before filing, the interest of the holder should be also examined and decide which could be the commercial strategies most appropriate and all the possible market outlets.

Territoriality
Patents, as well as trademarks and designs, is territorial. This means that it is valid only in those countries where it was filed therefore, it is very important to decide as soon as possible where filing it and what kind of file chose.

It is possible to decide between an Italian patent valid only in Italy and an European or an International patent which are valid in a higher number of countries.

Under certain conditions, it is also possible to opt for filing a single patent in one or some foreign countries. For this purpose, it is advisable to address to an expert able to act in those countries.

Ufficio Brevetti - Patents: the procedure to file a patent

Before filing a patent application we suggest a novelty search to understand if the invention you are want to protect is new and inventive.

The novelty search is carried out using precise databaseswith the support of experts in patent field able to interpret appropriately the results. At the beginning, one may use online databases but these are not completely reliable for a deep exam

The majority of the offices commonly conduct novelty search during the filing procedure.

From the 1st July 2008, Italian patent applications are also subject to novelty search. In Italy the search is made by EPO, the European Patent Office which sends it to UIBM. This last office transmits the search to the inventor within 9 months from the filing.

This new system made filing a patent in Italy very convenient because at a low price one has a good search that allows the inventor to choose consciously if his/her patent should be extended abroad and if it is worth invest in it.

Ufficio Brevetti - Patents: novelty search
3

 Who can file a patent

Find out which subjects can benefit from it.

A company or also a natural person that does not have a VAT number can file a patent.

A patent can be filed in the name of more than one person but it will be necessary to regulate carefully the use of the patent, which may not be allowed separately.The management aspect will also have to be regulated, and therefore it will have to be established on the basis of what criteria a choice will be made, in such a way as to avoid dead situations that could compromise the profit of the patent.

The person legitimated to request the patent is the inventor, but it could be also entitled to third parties who may not be inventors.Nevertheless, sometimes the right to the patent is entitled to third parties. It is the case of dependent employment for instance.

Art. 64 CPI in fact foresees that

1. When the industrial invention is made during the execution or the completion of a contract or of a work or employment relation, in which the inventive activity is considered as an object of the contract or of the relation and for this purpose paid, the rights deriving from the invention itself belong to the employer, except for the right entitled to the inventor of being recognized as author.
2. If there is no compensation expected or established, as payment for the inventive activity, and the invention is made in the execution or in the completion of a contract or of a work or employment relation, the rights derived from the invention belong to the employer. The inventor, instead, except for the right to be recognized as author, is entitled to, provided that the employer or its assigns obtain the patent or use the invention in regime of industrial secrecy, a fair prize that will be determined on the basis of the importance of the invention, of the tasks performed and of the pay received by the inventor will be assessed, as well as the contribution that it has received by the organization of the employer. (…)

It is not always easy to establish when we are dealing with one or the other of these hypotheses.

Other particular arrangements concern inventions created in the university field. In this case, the researcher is entitled to the rights over the invention but the University benefits of a percentage on the income of the use of the patent that can reach a maximum of 50% (art. 65 IPC).

Ufficio Brevetti - Patents: who can file a patent
4

 How long a patent lasts

The invention patent lasts 20 years from the filing date, while the utility model patent lasts 10 years from the filing date, and neither of them can be renewed.

In order to preserve the patent, it is necessary to pay an annual fee ordered by the state in which it has been filed.

5

 In which countries a patent is protected

Choose the filing that suits you

The patent has a territorial validity, therefore the protection of the invention is limited to the state or states in which the patent has been filed.

You can choose to file an Italian patent, valid exclusively in our country, or a European or International patent, which have a validity extended to a greater number of states. You can also choose, under certain conditions, to file a patent only in one or more foreign states. In this case it will be absolutely necessary to resort to an expert that can act in those states.

The choice of the type of patent and of the countries varies according to the type of invention. There are products that, due to their nature, may be placed in the market of certain states rather than others, or inventions that, for commercial strategies, may be exploited only in certain states.

We remind you that patents confer the exclusive right of production and commercialization, this is useful to evaluate in which the countries are you want the invention to be produced or sold.

The choice depends on strategic reasons and is made on the basis of how patents are thought to be exploited and consequently which market may be more appealing.

These are choices that has to be evaluated together with a patent attorney able to point out the pros and cons of a procedure in respect to another.

You: What if I want to extend my patent after having filed it?

The twelve months (the so-called propriety right) after the filing of the first application, it is possible to file the same patent abroad anticipating eventual patents filed in the preceding twelve months. This allows to file an application in Italy and then extend it at a later stage.

Attention, once the patent application is published and after the mentioned priority period of twelve months, it is no more possible for the patent to be extended abroad even in the case of the same holder.

6

 Priority

Who came first…

“Priority” is a right recognized to the person who files a patent application for the first time.

This right consists in the faculty, offered to the applicant, to file the same patent in one or more countries different from the initial one without being compromised by eventual preceding filings with respect to the filing in the new state but subsequently to the first filing.

The priority right for patents lasts twelve months from filing. Therefore, if for example a patent is filed in Italy on February the 1st, it is possible to file that same patent in the US on July the 20th and obtain the patent even if someone else filed it there on June of the same year. Thanks to the priority right, the patent filed on June would not cancel the novelty the patent filed in July, which would “date back” to date of the first filing, 1 February.

The priority is an interesting mechanism that serves to avoid abuses and to allow the applicant thinking on and evaluating the countries of possible extension.

After the priority period, the patent can be filed no more.

In some cases, and resorting to specific devices, the same patent can be filed within 18 months from the filing date of the first application, but the second patent will have an autonomous and independent filing date.

Ufficio Brevetti - filing a patent
7

 The difference between Patented and Patent Pending

Discourage competitors telling them you had patented your product.

The person that patents an invention wants his/her competitors to know that a product has been patented so that they would not imitate it.

When an invention is granted, the product can bear the writing “Patented”.

Other more specific expressions can also be used, such as “International patent” or “patented in Italy”.

You: What if I filed a patent but it has not been granted yet?

If a patent has been filed but it has not been granted yet, it is possible to write “Patent pending” or “Patent filed”, expressions that indicate precisely this condition.

A granted patent has been approved by the office and has therefore passed an examination phase, often complex, and offers greater warranties if compared to a patent that is still pending and that has not passed any exam by the office. So, if on the one hand the granted patent is valid and completely effective, on the other the filed patent could also not be approved.

However, in some countries – Italy included – a granted patentas well as a filed patent could be used to initiate a legal action against people producing goods that infringe the invention patent.

If the patent application is still in a security grading, before initiating a legal action, it is necessary to publish the application using a specific notification to the counterfeiter.

Ufficio Brevetti - Patents: patented and patent pending