The Patent

  1. What is a patent

  2. What can be patented

  3. Types of patent: invention and utility model

  4. The validity requirements of the patent

  5. The exclusive rights of the holder of the patent

  6. Grant and duration

  7. Expiry

1. What is a patent

Following law definition, a patent in Italy is a title that allows the person who has created an invention to produce and commercialize it in an exclusive manner in the state in which the patent has been requested.

Obtaining a patent is therefore of utmost importance for those who have invested in innovation and in research since only in this way an exclusive right will be assured and third parties will be impeded to copy their own product.

Innovative products of any type can be patented (machines, objects of ordinary use, containers, electronic devices…) or procedures, also chemical ones, for obtaining a determined product. Food products, composites and substances are also patentable.

2. What can be patented

In the Italian Civil Code, Art. 45 CPI (Industrial Property Code) states that inventions that belong to any technical field can be patented, and it foresees instead that « a) discoveries, scientific theories and mathematical methods; b) layouts, principles and methods for intellectual activities, for play or for commercial activity and computer programs; c) presentations of information.» cannot be patented.

The same article also specifies that the ban is valid on condition of the measure to which said discoveries and said software are considered “as such”; therefore, if an invention is created by means of them, it will be able to be patented in Italy , after an appropriate analysis.

Methods for the surgical and therapeutic treatment cannot be patented, while medical devices can. Vegetal varieties and animal breeds cannot be patented, but microbiological proceedings can.

3. Types of patent: invention and utility model

There exist two types of patent: the invention patent and the utility model patent.

The invention is the stronger form of protection that is granted to those inventions that present a high degree of innovation but that, above all, represent a new and original solution to a technical problem never solved before.

The invention patent has a duration of 20 years from the filing date of the application and, like all patents, cannot be renewed at expiry.

The utility model is a type of patent that exists in Italy and in other few states. It is normally granted, also in those states that foresee a substantial examination for inventions, without any type of examination and, therefore, it is easier to obtain it but it is also more difficult to protect. It lasts 10 years and is not renewable.

The protection with a utility model is sought for those objects (not proceedings) that represent an amendment of existing objects that involves a greater utility or ease of use of the object itself. Normally, it is said that with the utility model the form of a product that has a specific functionality is protected.

It is often difficult to choose between invention and utility model and this is why the law foresees the possibility of doing what is called a “double filing” (art. 84 CPI), that is a contemporary filing of the same patent application both as an invention and as a utility model, leaving Italian Patent and Trademark Office the choice between one or the other solution.

Apart from the static legislative definition, much study and much practice are required to understand what can be patentable as an invention, though in a synthetic manner a not much satisfying definition is often used, which is that the invention represents an innovative solution to a technical problem, while the utility model represents an amendment that improves existing objects.

4. The validity requirements of the patent

To be valid, a patent has to be NEW, INVENTIVE, LICIT and provided with INDUSTRIAL character.

The patent has to be new in an absolute way, that is it should not have been produced or patented in any part of the world. The concept of novelty is intended in a wide sense and in the “state of the art” is comprised all that has been rendered public, in Italy or abroad, before the filing date of the patent application.

Is an object has been made or patented in China but not in Italy, for example, this means that anyone in Italy will be able to produce it or sell it, but he will certainly not be able to patent it: the difference is evident, since without the patent he will be able to act in a system of free competition without pretending to have any monopoly.

The patent has to be also original or inventive. The inventive activity subsists every time that the invention does not result in an evident way from the state of the art for an expert of the field.

An invention, to be patentable, does not have to be just “new” in the sense of inexistent, but it has to be also not banal and has to represent a progress, a step forward, with respect to the current state of the art. To establish when a finding satisfies this requirement is sometimes difficult and is always advisable to resort to an expert for an adequate examination.

Moreover, only solutions that can be reproduced at industrial level can be patented.

Objects that can damage the sense of behavior or be contrary to public order, two concepts in continuous evolution, cannot be patented.

5. The exclusive rights of the holder of the patent

The holder of the patent acquires the right to make exclusive use of the invention.

As clearly foreseen in art. 66 CPI, the holder acquires the right to realize the invention and profit from it.

In particular, the holder acquires: «if the object of the patent is a product, the right to ban third parties, except for the consent of the holder, to produce, use, put in commerce, sell or import for those purposes the product in question; b) if the object of the patent is a procedure, the right to ban third parties, except for the consent of the holder, to apply the procedure, as well as to use, put in commerce, sell or import for those purposes the product directly obtained with the procedure in question» The holder is entitled therefore to the so-called patrimonial rights (art. 63 CPI) that may also be assigned and transferred, while the moral right of being recognized as the author of the invention cannot be assigned and the inventor, who can be different from the holder, is always entitled to it (art. 62). Consider the case in which the holder of a patent is a company and the inventor is an employee.

6. Grant and duration

The exclusive rights conferred by the law to the holder are obtained with the grant of the patent.

The rights are however valid from the filing date of the patent application and last 20 years (10 for the utility model), at the expiry of which it is not possible to renew the patent, which expires and becomes freely reproducible by everyone.

To keep the invention patent alive, it is necessary to pay the annual maintenance fees foreseen and, in the case of utility models, a renewal fee is to be paid at the expiry of the first five years.

7. Expiry

As foreseen by art. 75 CPI, the invention patent expires by non-payment of the annual fee foreseen. The fee has to be paid at the expiry but can also be paid, with a surcharge, in the subsequent six months. Once this further term is expired, the patent expires without any possibility of re-establishing the rights over it.

The patent expires as well if the invention has not been realized within three years from the grant of the patent (or four years from the filing of the application) and two years have passed from the grant of an obligatory license to the holder of the patent (art. 70). It is however a rather atypical hypothesis in practice.