WHY CONTACTING A REGULARLY REGISTERED PATENT ATTORNEY?
It is not compulsory to be represented by a patent attorney before the Italian Patent and Trademark Office (UIBM). However, patenting procedures are very complex and with little – if any – possibility to correct possible mistakes made when drafting the patent application.
The patent is a legal document which has to possess certain characteristics not only to pass the examination procedure but also to be strong in case of possible future litigations.
The patent consultant aims at enlarging the scope of protection of the application so as to prevent the patent from being easily circumvented and finds the right compromise between information which must be given and knowledge which should not be disclosed being the inventor’s know-how.
PATENT FOR INVENTION
It is a legal instrument that allows people with innovative ideas to protect them from imitation by other people and use them exclusively. A form of protection which is granted both to companies and to natural persons for inventions with a high degree of innovation that represent a new and original solution to a technical problem.
THE PATENT IS AN INTANGIBLE ASSET
The patent is an intangible asset; it is possible to transfer a patent, to license a patent or to give it as a guarantee for bank loans and it is very often used to access financing / tax relief.
The object of the Patent must be absolutely new, that is to say, it must have never been produced or patented in any part of the world with reference to the ‘present state of the art’, that is everything that has been made public earlier than the date of filing of the application.
Originality (or inventive step)
It subsists every time that the invention does not appear evidently from the state of the art for an expert of that field, that is to say, it must not be banal, and it must represent an innovation with reference to the present state of the art.
Only solutions that can be reproduced on an industrial level can be patented.
Objects that may offend the sense of morality or public order cannot be patented.
A novelty search is anyway carried out during the filing procedure by the majority of national patent offices.
Since July 1st, 2008 Italian patent applications also undergo a novelty search by the EPO, European Patent Office, who then sends it to the Italian Patent and Trademark Office who in turn sends it to the inventor within 9 months from the filing date.
In this way, filing a patent application is advantageous because at a low cost a search is made, the result of which can be useful to the inventor to assess whether the patent deserves to be extended abroad or in any case whether it is worth investing.
Warning: pre-disclosure of the subject matter of the patent application involves the nullity of the patent application.
This right gives the owner of the patent application the possibility to file the same patent in one or more Countries different from the initial one claiming the filing date without being affected by possible patent applications filed prior to the filing date in the new Country, but after the first filing date.
The following are excluded from patenting:
a. Discoveries, scientific theories and mathematical methods.
b. Plans, principles and methods for intellectual activity, games or for commercial activities and computer programs (Particular conditions for computer programs are applied, see Copyright).
c. The presentation of information.
Therapeutic and diagnostic methods cannot be patented, but this prohibition is not extended to products which are required to apply such methods.
Right to exclusively produce and market in the country in which the patent has been applied for. Right of ownership and exclusive property. Right to prohibit other people from producing, selling, advertising, using or importing.
Filing of the patent application,
within 12 months from the filing date, the owner may decide whether or not to integrate the Italian patent application, by extending it (claiming priority) to other territories, maintaining the original filing date.
Within 9 months from the filing date, a search report is issued in cooperation with the European Patent Office (EPO) and after 18 months the patent application is published.
Within 21 months from the filing date, it is necessary to reply to the ministerial communication delivered by the Italian Patent and Trademark Office, relative to the search report. Afterwards, the application follows an administrative procedural process which normally ends with the grant of the patent.
NATIONAL OVERSEAS PATENT
It can be obtained in Countries that have relations of reciprocity with Italy and that accept applications for the patenting of foreign inventions. Duration: it depends on the legislation of each Country.
The Convention on the Grant of European Patents (EPC, Munich, 5th October 1973) established a standard procedure of filing, examination and grant of a European Patent by the E.P.O. (European Patent Office). With one single application protection is requested in all the Countries that have signed the Convention and a title is obtained, which grants, in the territory of the designated Countries, the same rights as the respective national patents.
Priority: within 12 months from the date of filing of a national patent, its validity can be extended on a European level, claiming its priority.
Duration: 20 years.
Filling of a patent applications
Prior art search carried out by the European Patent Office (EPO) and delivery of the search report.
The patent’s owner has to reply to said search report, possibly limiting the claims so as to overcome possible objections raised.
After 18 months from the filing date (or from the priority date) the patent application is published on the EPO website.
An examiner of the European Patent Office carries out an examination in relation to the patentability requirements.
A notice of intention to grant is issued which involves the request for approval of the patent text by the owner.
The EPO finally grants the title.
After the grant the 9-month opposition period starts, during which a third party may file a letter of opposition to the granted patent, together with arguments and prior art documents relevant for the patentability. An opposition (according to its concreteness) may lead to the limitation, withdrawal or maintenance in full of the granted patent.
Within a deadline established by law, the owner has then to validate the patent in the designated Countries, by filing in some cases the partial or full translation of the content of the granted patent.
The PCT (Patent Cooperation Treaty) system of International Patenting was born from the Patent Cooperation Treaty (Washington, 19th June 1970) and allows to apply for patent protection in over 100 European and non-European Countries, among which U.S.A., Japan, Canada, China and all the main industrialized Countries through the WIPO (World Intellectual Property Organization). This procedure provides one single application, a preliminary international search and a following report of preliminary examination and following national/regional phases by the Patent Offices of the single designated countries.
Priority: within 12 months from the date of filing of a national patent, its validity can be extended on an international level, claiming its priority.
Duration: it depends on the legislation of each Country.