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/utility model 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/utility model 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.

Attention: pre-disclosure of the subject matter of the application involves the nullity of the application.

ITALIAN UTILITY MODEL
A Utility Model is an invention which provides particular effectiveness or ease of application or use on machines or parts of them, instruments, tools or objects.

PATENTABILITY REQUIREMENTS
Novelty
The object of the Utility Model 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.

Industrial character
Only solutions that can be reproduced on an industrial level can be patented.

Lawfulness
Objects that may offend the sense of morality or public order cannot be patented.

Duration
10 years.

Rights
Right to exclusively produce and market in the country in which the utility model has been applied for. Right of ownership and exclusive property. Right to prohibit other people from producing, selling, advertising, using or importing.

INTERNATIONAL UTILITY MODEL
It is possible to obtain the recognition of a Utility Model only in some countries. Such a form of protection can be obtained only in:

•  Italy, France, Germany, Spain, Portugal, Austria, Greece, Ireland, Denmark, Poland, Hungary, Czech Republic, Slovak Republic, Estonia, Finland;
• Japan, China, Republic of Korea, Philippines, Brazil, Uruguay.

Duration
According to the legislation in force in each Country.