Italian
Smartfish

P&TS also represents clients in Italy

Italian patents

Italy constitutes the fourth largest market in Europe. The Italian patent is an economical alternative to the European patent when it is sufficient to protect a limited number of countries within Europe. In addition, the Italian utility model provides an interesting alternative for “small inventions” for which costs and patentability requirements are lower.
P&TS is in a position to represent you directly before the Italian patent and trademark office (UIBM), e.g. for validating a European patent in Italy, which avoids the additional costs of appointing a local representative. Maria Maina, Giovanni Gervasio and Johannes Wohlmuth are Italian patent attorneys and are currently preparing to be able to make direct representation to file national Italian patent applications or utility models.
Etude de brevetabilité et recherche de brevets

Italian patent: patentability search

When an invention is submitted to us, we first start by checking its novelty by means of a patentability search.  The aim of this search is to determine precisely the prior art that is closest to the invention.  To complete the search, a report is established that contains a list of patents and possible articles published by third parties that raise concerns as to the patentability of the invention, as well as our advice for protection.
The costs of the patentability search are invoiced according to a flat fee agreed in advance, often around CHF 3,000 + VAT for an invention of average complexity.
Nearly half of the inventions that are submitted to us are abandoned in the light of the patentability search report, when the inventors become aware that the prospects of obtaining protection do not justify the costs or efforts. In this case, the patentability search that was carried out enables the applicant to achieve considerable cost savings by avoiding the filing of a useless application.
Should the procedure on the other hand continue with the drafting of a patent application, the patentability search makes it possible to ascertain which characteristics can be effectively protected and to optimize the drafting of an application to clearly highlight the differences between the new invention and the documents uncovered by the search.
The patentability search report is also accompanied by one or several suggestions as to the strategy for protecting the invention, taking into account the commercial prospects of the invention, the uncovered prior art and the applicant’s budget.
Dépôt d'une demande de brevet

Italian patent: filing

The text and the drawings of the patent application are then filed with the Italian Patent Office (UIBM) with a corresponding request. The formalities department of the UIBM checks formal aspects and gives the application an application number and a filing date if some requirements are met.

From this date onwards, the invention described in the application may be disclosed publicly or commercialized without this publication being opposable to the patent. The applicant can furthermore indicate “IT patent pending” on the product and associated documentation.

Italian patent: search report

Only if the Italian patent application does not claim any priority, the UIBM sends a copy of the application to the European Patent Office which performs on behalf of the UIBM a prior art search and establishes an opinion on the patentability of the application in English. The search for an Italian patent application is economically attractive, because no taxes for the search need to be paid, if an English translation of the claims is provided.

The European Patent Office generally strives to prepare this report within a nine months’ deadline after the filing date.

The search report contains a list of documents uncovered by the search examiner and deemed relevant for assessing the novelty and inventiveness of the invention. The documents are attached to the report. A letter next to each document indicates its relevance. The main codes are “X”, used to designate a document which on its own is considered to call into question the novelty or the inventiveness of a claim of the application, and “Y”, which designates the combinations of documents which, together, allow the inventiveness of a claim to be challenged. The letter “A” designates the documents cited as technological background.

The search report and an opinion on patentability are then transmitted to the applicant, who then has a three months’ deadline for answering the possible objections raised against patentability. If the search report contains only documents marked A by the examiner, it is not compulsory to submit a response to the UIBM.

Italian patent : publication

Italian patent applications are published about 18 months after the filing date, or if a priority is claimed, after the date of the oldest priority. An earlier publication after 90 days can be requested at the filing date.

Brevet délivré

Italian patent: grant

The Italian patent is granted when the objections in the search report eventually raised were overcome.

It is possible to take action against a third party after the grant. The owner can also apply markings on the product protected by using indications such as “Italian Patent”, “patented” etc.

Italian patent: renewal fees

The validity of an Italian patent is 20 years maximum, provided however that annual maintenance fees are paid each year. The annuities, which increase progressively, must be paid to the UIBM starting from the 5th year.
abandon du brevet européen ; déchéance

Italian patent : lapse

The Italian patent or patent application may cease to produce its effect in one of the following cases:

  • in any case, 20 years after the filing date
  • if the applicant or owner stops paying the renewal fees or any other required fee
  • if the applicant fails to answer an office action from the UIBM
  • in case the application is rejected on the grounds that it does not comply with the requirements of the Italian Patent Law
  • in case of revocation by a court

Contact

Maria Maina

Swiss, Italian and European Patent Attorney