Filing a Patent

  1. What filing a patent means
  2. The novelty search
  3. Who can register a patent
  4. How long it is valid
  5. In which states it is protected
  6. The priority
  7. The difference between Patented and Patent pending

1. What filing a patent means

Filing a patent application is not simple and is strongly unadvised to proceed without the help of an expert.

To file a patent application it is necessary to prepare a file that will have to contain a series of documents, while a prototype of the invention realized, which can also not exist, will not have to be filed (and it will not be possible to do so). The invention is patented on the basis of a project that has to be described to the Patent Office of the state of interest in an adequate manner.

Before preparing the necessary documents, it is necessary to examine the invention thoroughly to evaluate if it is patentable and which the best way to protect it is. While for some inventions the evaluation is quite agile, for others it is not at all like this. Consider patents related to food products, to software, or to all those inventions apparently banal that precisely for this reason have to be described in a rigorous manner.

Once this preliminary evaluation is made, it is necessary to prepare the documents to attach to the patent application, which has to satisfy the requirements foreseen by law and be written according to the teachings of the Patent Offices of the states. A generic description of the inventive object is not enough; it is necessary to prepare a text with relative drawings so as to make the examiner understand not just the object but exactly what the invention consists of. The document does not have to be a simple description of how the product that wants to be patented is made, but it has to be written in such a way as to highlight well which the innovative aspects on which to obtain the protection are. The difficulty in writing the patent lies precisely in this. Even if you are a technical expert in a certain field, it is hardly possible to write a patent application in an optimal way if you are not a Patent Agent. Before proceeding with the filing, it is also necessary to evaluate the interest of the applicant and to establish which the commercial profit strategies and the potential target markets are. The patent, like the trademark and the design, is territorial in the sense that it is valid only in the states in which it is filed, therefore it is necessary to establish from the beginning where it will have to be filed and what type of filing will be done. You can choose to file an Italian patent, which has validity only in our country, or a European patent, or an 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 in some foreign states and in that 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 states in which to file it varies according to the type of invention. There are products that, due to their nature, can be placed in the market of certain states rather than of others, or inventions that may be exploited, for commercial strategies, only in certain states. We remind you that the patent confers the exclusive right of production and commercialization, therefore this serves to evaluate which the countries are in which the invention wants to be produced or sold. These are choices that have to be evaluated together with a patent agent that can from time to time point out the advantages and disadvantages of a procedure with respect to another one.

2. The novelty search

Before filing a patent application it is advisable to do a novelty search to evaluate if the invention that wants to be protected is new and inventive. The novelty search is done by using specific databases and with the help of patent experts that will be able to read the results thereof and interpret them adequately. For a first screening databases available online can be consulted, but for a serious and thorough examination these databases cannot be trusted exclusively. The novelty search is anyway done by most offices in the course of the procedure of filing. As from 1 July 2008 also Italian patent applications undergo a novelty search. This search for Italy is conducted by the EPO, the European Patent Office, and is forwarded to the UIBM (Italian Patent and Trademark Office), which in turn communicates the results thereof to the inventor within 9 months as from the filing of the application. This innovation has rendered the filing of patent applications in Italy particularly advantageous since at a reduced cost you can obtain an optimal search on the basis of which the inventor can choose with greater awareness if it is worth extending the patent abroad or not, or anyway if it is worth to invest on it.

3. Who can file a patent

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. Nevertheless, there are particular cases in which the right to the patent is entitled to third parties. This happens mainly when dependent employment is concerned. Art. 64 CPI in fact foresees that «1. When the industrial invention is made in the execution or in the completion of a contract or of a work or employment relation, in which the inventive activity is foreseen as an object of the contract or of the relation and to that aim 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 a pay is not foreseen and established, as compensation 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 always 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. (…)» To establish when we are within one or the other hypothesis is not always easy. Other particular arrangements exist in connection with inventions created in the university field. In this case, the researcher is entitled to the rights over the invention but the University is entitled to a percentage on the profits of the use of the patent that can reach a maximum of the 50% (art. 65 CPI).

4. How long it 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 keep a patent alive, it is necessary to pay the annual fees foreseen by the state in which it has been filed.

5. In which states it is protected

The patent has a territorial validity, therefore the protection of the invention is limited to the state or to the states in which the patent has been filed. You can choose to file an Italian patent, which has validity only in our country, or a European patent, or an 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 in some foreign states and in that 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 states in which to file it varies according to the type of invention. There are products that, due to their nature, can be placed in the market of certain states rather than of others, or inventions that may be exploited, for commercial strategies, only in certain states. We remind you that the patent confers the exclusive right of production and commercialization, therefore this serves to evaluate which the countries are in which the invention wants to be produced or sold.

The choice depends on strategic reasons and is made on the basis of how the patent is intended to be exploited and therefore to the market that can be more appealing. It has to be taken into consideration as well that from the filing of the first application a period of twelve months (so-called priority right) runs within which it is possible to file the patent abroad anticipating eventual patents filed in the preceding twelve months. This allows to initially file an application in Italy and then extend it in a subsequent moment.

6. The “priority”

The “priority” is a right recognized to the person who files a patent application for the first time. This right consists of the faculty offered to the applicant of filing the same patent in one or more states different from the initial one without being compromised by eventual filings that have taken place previously with respect to the filing in the new state but subsequently to the first filing. The priority right for patents is valid within twelve months from filing. Consequently, if a patent is filed on 1 February in Italy, for example, the same patent can be filed in the US on 20 July and the patent can be obtained even if someone else had already filed the same patent in the US in June of the same year. Thanks to the priority right, in fact, the filing of June would not cancel the novelty to our patent of July, which would “date back” to 1 February, the date of the first filing. The priority is an interesting mechanism that serves to avoid abuses and to allow the applicant to reflect and evaluate the states of possible extension.

Once the priority period has expired, the patent will not be able to be filed anymore. 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.

7. The difference between Patented and Patent Pending

The person who patents an invention has interest in the fact that competitors know that it is a patented object so as to refrain from imitating it. When an invention is granted the word “Patented” can be written on the product. Other more specific expressions can also be used, such as “International patent” or “patented in Italy”. If a patent has been filed but has not been granted yet, “Patent pending” or “Patent filed” can be written, which are expressions that indicate precisely this condition. A granted patent has been approved by the office and has therefore overcome an examination phase, often complex, and offers greater warranties with respect to a patent that is still pending and that therefore has not overcome any exam by the office. Therefore, while the granted patent is, until contrary proof, a valid and fully effective patent, the filed patent could also not be approved. Nevertheless, both the granted patent and the filed patent can be used to initiate a legal action against the person who produced goods that infringe the invention patent.