- The preliminary choices
- How to file an Italian patent application
- The anticipated accessibility to the public
- The grant procedure of a patent
- The appeal against the Office’s decisions
- Withdrawal and limitation of the application
- Assignment of the patent
1. The preliminary choices ↑
Before filing a patent it is necessary to examine thoroughly the invention and establish which the central aspect to be protected is and which the possible variants could be. With a patent application only one invention can be protected, therefore it is important to examine the alternative solutions to avoid that the patent can be easily eluded. It is also important to do a novelty search to be sure of the fact that the patent is new. If you have not done it yet, we suggest reading the section Filing a patent, which offers some useful advice on the matter.
When the preliminary analysis has been done carefully and, as it is always advised, with the help of an expert consultant in the field, the preparation and filing of the application can be done. There exist two types of applications: the invention patent application and the utility model patent application. From the substantial point of view, the documents to prepare 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 cannot be filed directly through the Internet but it can be filed either on paper, requesting and filing the relative forms with the specific office that is found in the Chamber of Commerce, or online but using a specific platform that requires the use of a reading device of the smart card for the digital signature. This last solution is therefore chosen by qualified professionals.
2. How to file an Italian patent application ↑
For filing the patent application it is necessary to fill in a specific form (Form A for inventions, Form U for utility models), which is found in the Chambers of Commerce and that is downloadable from the Internet. 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 that derive from the use of the invention. 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 most important part of the patent are the “Claims” that have to reproduce, in a specific technical jargon, the elements on which the protection is sought. To understand the importance of the claims, it is enough to consider that in general what is described but not claimed is not object of protection. The claims are intended to be formulated in a “waterfall-like” manner in the sense that the first one is the most important one, which encloses the core of the invention, while the subsequent ones are a sort of specification of the first one.
Also technical drawings will have to be prepared in such a way as to show well which the inventive solution that wants to be protected is. 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 will have to be paid, which vary on the basis of the type of patent. To know the official fees in force at the moment of the filing of the application, it is advisable to consult the Italian Patent and Trademark Office website. To prepare the patent application well is as fundamental as to analyse well the invention before filing it, since on the basis of these preliminary choices the possibility of defending the patent in case of counterfeiting is higher or lower.
3. The anticipated accessibility to the public ↑
In the application form for the filing of a patent application a box is present that allows to choose the anticipated accessibility to the public rather than keeping the application secret. In order to choose between one of the two options, it is good to have in mind that although protection is obtained as from the moment of the filing of the patent application, the effects towards third parties exist from the moment in which the application is rendered accessible to the public. 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 time presents significant advantages because later the competitors will be able to read the text of the application and will be able to organize themselves consequently. Moreover, the secrecy of the application for 18 months can permit to extend the application in other foreign countries, during the period of secrecy of the application, even if the period of the priority of 12 months has already expired. In case of a secret application, if there are infringement proceedings action can be taken by notifying a copy of the patent application to the infringer.
4. The grant procedure of the patent ↑
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 initiates.
As from 1 July 2008 Italian patent applications undergo a novelty search that is done directly by the European Patent Office and sent to the Italian Patent and Trademark Office, which in turn 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 eventual objections or to “review” the application in the light of eventual patents found that can obstacle the grant of the patent.
In this regard, it is good to point out that to the patent text nothing can be added since the invention is crystalized 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 arrives to grant. Once the patent has been granted, a grant date and number will be assigned to it and the holder will be able to obtain the relative certificate of registration.
Even if some months before the patent application is accepted or refused by the Ministry are needed, in 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 to avoid mistakes that could compromise the success of such an action.
The invention patent has a duration of 20 years that start from the filing date but each year from the fourth year maintenance fees have to be paid to keep it alive. The utility model patent has a duration of 10 years but at the expiry of the first five years the maintenance fee has to be paid for the second five years.
5. The appeal against the Office’s decisions ↑
Against the UIBM’s provisions with which the Office refuses, totally or partially, an application filed, it is possible to file a complaint before the Appeals Commission (art. 135 CPI). The Appeals Commission is composed of magistrates and professors nominated according to a decree of the Ministry of Economic Development. The sentences 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 because of the particular difficulty of the subject but also because it is foreseen by law.
6. Withdrawal and limitation of the application ↑
At any moment between the filing of the application and the grant of the patent, the person who has filed the application can always withdraw it (and therefore renounce to it) or limit it, for example by reducing the number of claims. It can 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 the publication thereof wants to be avoided. Amendments to the patent application can be made but 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.
7. Grant of the patent ↑
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 “owner”; in the second case, it is a sort of “rent” with which the use to third parties is granted. The patent assignment contracts are very delicate. It is in fact necessary to have a wide knowledge of the patent that is being sold, but above all acquiring, and this is why an adequate technical analysis is necessary, suitable to check that the patent is alive, that there are no potential or actual conflicts, that there are no co-existence agreements and the like. 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.
8. Regulations ↑
Legislative decree 10.02.2005 no. 30 (Industrial Property Code)