Articles

NATIONAL PATENTS

A patent is an exclusive right to exploit a new invention which may have an industrial use.

New inventions which involve an inventive step and are capable of having an industrial application are patentable.

Patents grant protection in the entire Italian territory, in the State of San Marino and may be recognized in the Vatican State.

Patent applications are to be filed in Italy at the Provincial Offices of the Ministry of Industry (UPICA) or at the Italian Patent and Trademark Office (UIBM).

 

Requirements for Italian patents to be registrable:

 

  • Novelty
  • Inventive step.
  • Industrial application

 

It is important to know that:

 

  • Novelty must be absolute
  • Any divulgation of the invention before the patent application’s filing date or before the priority date can potentially make the patent void.
  • The invention must be usable in industry, including service and agricultural sectors.
  • Methods for surgical or therapeutic treatment of human or animal body and diagnostic methods applied to human or animal body are not deemed to be inventions. This provision is not applicable to products, in particular to substances or mixtures of substances for implementing one of the above mentioned methods.
  • Animal races and essentially biological procedures for obtaining the same are not patentable. This provision is not applicable to microbiological methods and the products obtained with these methods.
  • Not deemed to be inventions are in particular the following:

a) Discoveries, scientific theories and mathematical methods;

b) Schemes, rules and methods for intellectual, game or commercial activities and computer programs;

c) Presentation of information.

  • 18 months after the application date or before in case of prior public accessibility, or earlier if the third party has been notified, the applicant may prevent any third party from using it.
  • The patent application for invention must be accompanied with an English translation of the claims enclosed to the Italian text.
  • Based on the filed patent’s text, drawings and claims, the European Patent Office, via The Italian Patent and Trademark Office, will send a search report and an opinion on the invention’s patentability before the expiry of 12 months from the filing date.
  • That opinion will be the basis for granting the Italian patent. If the search report has highlighted priorities which can invalidate one or more claims, the Italian Patent and Trademark Office will request the applicant to change the claims or give adequate explanations within a certain term. In case of missing the deadline given for the answer or inadequate answer, the Italian Patent and Trademark Office may refuse to grant the patent.
  • No opposition procedure is provided.
  • Patents are granted about 3 years after the filing date, however, exclusive rights can be exercised even if the patent has not been granted yet.
  • Italian patents are subject to compulsory use clauses.

 

Ownership of an Italian patent:

 

  • Any natural or legal person of Italian or foreign nationality.

 

Priority:

 

  • It is possible to claim the priority of the first patent application filed in Italy or in another Member State of the Paris Convention within 12 months from the filing date of that first application.
  • More than one priority can be claimed.

 

Duration and maintenance of an Italian patent:

 

  • Patents are valid for 20 years running from the filing date.
  • annual maintenance fees are required to be paid as from the 5th year.