In this section you will find information about Italian patent.
- Preliminary choices
- How to file an Italian patent application
- The anticipated accessibility to the public
- The grant procedure of a patent
- Appeals against the Office’s decisions
- Withdrawal and limitation of the application
- Assignment of the patent
Before filing a patent, it is necessary to examine thoroughly the invention, to establish the central aspect to be protected and the possible variants.
With a single patent application only one invention can be protected, so examining alternative solutions is very important to avoid the patent to be easily eluded.
Conducting a novelty search is important to be sure if your patent is new. If you have not done it yet, we suggest you to read the section Filing a patent which gives useful advice on this matter.
When the preliminary analysis has been carefully done with the help of an expert in the field, as it is always advised, the preparation and filing of the application can be done.
There are two types of application: the invention patent application and the utility model patent application.
From the substantial point of view, the documents to be prepared are basically the same since in both cases a specific description will have to be drafted, with the relative technical drawings attached.
The patent application can be filed exclusively online through the appropriate platform which requires the use of a digital signature.
The procedure is not simple and we suggest asking the help of an expert in the field.
As an alternative, it is possible to resort to the Chamber of Commerce which does not offer advice but only transmits electronically the patent application made by the client.
Our advice is to contact an expert patent attorney. The risk is to file a weak patent or to file it wrongly.
For filing the patent application it is necessary to fill online a specific form on the platform indicated by the Ministry.
In the form the information on the applicant, who will become the holder of the patent, the title of the patent and the name of the inventor have to be indicated.
The Description, the Claims and the technical drawings have to be attached to the form.
The Description, first of all, has to highlight the technical problem that the invention wants to solve and the advantages deriving from the use of the invention. Then, all the main technical-constructive features of the solution proposed have to be described, with the help of the drawings attached. According to the type of invention the functioning or the procedure, with which a certain result is obtained, will be described.
The “Claims” that have to be reproduced are the most important part of the patent, in a specific technical jargon, they are elements on which the protection is sought. To understand the importance of claims, it is sufficient to consider that in general what is described but not claimed is not object of protection. Claims are intended to be formulated in a “waterfall-like” manner in the sense that the first one is the most important because it encloses the core of the invention, while the subsequent ones are more or less a specification of the first one.
Technical drawings also should be prepared showing clearly the inventive solution that we want to protect. Therefore, it is unadvisable to attach too much detailed constructive drawings with measures and irrelevant particulars.
In order to proceed with the filing, administrative fees and official fees which vary on the basis of the type of patent should be paid. To know the official fees in force at the moment of the filing of the application, it is advisable to consult the website of the Italian Patent and Trademark Office.
To prepare well the patent application is as fundamental as to analyze well the invention before filing it since on the basis of these preliminary choices depend the possibility of defending the patent in case of counterfeiting.
In the application form used for filing patent application there is a box allowing to choose the anticipated accessibility to the public rather than keeping the application secret.
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, solving this type of problem. Nevertheless, keeping the application secret for a longer period presents significant advantages because competitors will be able to read the text of the application organize themselves later.
Moreover, the 18 months of secrecy permit the extension of the application in other foreign countries, during the period of secrecy of the application, even if the period of 12 months of the priority has already expired. In case of a secret application, if there are infringement proceedings, one can act notifying a copy of the patent application to the infringer.
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 begins.
From 1 July 2008 Italian patent applications undergo a novelty search done directly by the European Patent Office and sent to the Italian Patent and Trademark Office, which then 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 assigned (which is generally of 21 months from the filing date) to eventually reply to objections or to “correct” the application in the light of the finding of eventual patents that can obstacle the grant of the patent.
In this regard, it is good to point out that nothing can be added to the patent text since the invention is crystallized as described at the moment of the filing. Nevertheless, the claims can be limited or clarified, always remaining within the limits of what has been originally described.
If after this examination the Italian Patent and Trademark Office considers that the patent can be accepted, it is granted. Once the patent has been granted, a grant date and number will be assigned to it and the holder may have the relative certificate of registration.
Even if the patent application needs some months before being accepted or refused by the Ministry, during this period the invention can be realized and, in many states, it can also be sold or licenses can be given on it. 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 in order to avoid mistakes that could compromise the success of such an action.
The invention patent has a duration of 20 years starting from the filing date, but each year after the fourth maintenance fees have to be paid to keep it alive.The utility model patent has a duration of 10 years, after the first five years a maintenance fee has to be paid for the next five years.
The Appeals Commission is composed of magistrates and professors nominated according to a decree of the Ministry of Economic Development. The judgments of the Commission can be challenged before the Court of Appeal.
Given the nature of the procedure, it is necessary to be represented by an Attorney or by an Industrial Property Consultant, not only for the particular difficulty of the subject but also because it is laid down by law.
In any moment, between the filing of the application and the grant of the patent, the person who has filed the application can withdraw (and therefore renounce to it) or limit it, for example by reducing the number of claims.
It may be necessary to withdraw or limit the patent, for example, when a conflict with a third party that has pre-existing rights arises or when the patent has been kept secret and therefore not published.
Amendments to the patent application can be made only within strict limits and never 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 address of the holder.
Changes in the registry, withdrawals and limitations have to be communicated to the Office by filing a specific petition for annotation.
A patent, apart from being realized, can be assigned or licensed to third parties. In the first case, it is similar to a sale, therefore the patent changes its “owner”; in the second case, it is a sort of “rent” which grants its use to third parties. The patent assignment contracts are very delicate. It is in fact necessary to have a wide knowledge of the patent that is being sold, and above all acquiring, and this is why it is necessary an appropriate technical analysis aimed at checking the status of the patent (if it is alive, if there are potential or actual conflicts, that there are no co-existence agreements and similar) is required. All this is obtained by making an accurate analysis of the patent (so-called due diligence), without which the risk of purchasing an empty box is high. Another relevant aspect is that of the value of the patent, something which is not easy to assess without the help of an expert.
The assignment, or license, of a patent has to be registered with the Italian Patent and Trademark Office through a specific petition for annotation. The registration is necessary for the effectiveness in front of third parties and above all to guarantee the acquiring or licensee party.