Patents
The patent is a title that gives its owner a temporary monopoly of exploitation of an invention that is new, capable of having an industrial application and that involves an inventive step.
The patent gives its owner, in a specific territorial area, the exclusive right to implement the invention and profit from it by preventing third parties from using, producing or marketing the product or carrying out a process that is the subject of the patented invention, without their consent.
The rights to implement the invention can be exploited directly by the patent holder, or these rights can be transferred to third parties, therefore be subject to agreements of assignment, as well as to license agreements, exclusive or partial, or commercial agreements of another kind.
Ferraiolo s.r.l. assists its clients in a wide range of services aimed at the protection and defense of their patent business. These services range from the evaluation of the patentability of any innovation or new technical solution, to the drafting of patent applications, to the phases of prosecution and examination of a patent application.
In particular, we assist our customers in:
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– prior art searches in Italy and abroad; – status-life research of patent rights and retrieval of patent documents, – study and opinions for the evaluation of the patentability of an invention or a discovery, – study, drafting and filing of patent applications in Italy, European Patents (EPs, International Patent (Patent Cooperation Treaty – PCT) or in individual foreign countries, – phase of examination of patent applications in Italy, European Patent and in foreign countries, – national and regional phases of international applications – PCT, – national phases of European Patents, – monitoring of the duration and maintenance of the patent, payment of patent rights maintenance fees. Our services also include: – assistance to researchers in evaluating their inventions and their patentability, – assistance in the field of licensing and assignment of patent rights, – assistance in disputes, counterfeiting and unfair competition. |
Geographical areas
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Italian Patent
The competent office is the Italian Patent and Trademark Office-UIBM, an office of the Ministry of Enterprises and Made in Italy that deals with the administrative activity related to the filing, registration and granting of patent titles.
The Italian patent is an exclusive right valid only on the Italian territory.
FILING OF THE APPLICATION AND GRANTING PROCEDURE
Starting from 2008, the cooperation between UIBM and EPO-European Patent Office allows to obtain a search report with a preliminary patentability opinion (Written Opinion) for those patent applications not claiming priority, without any additional governmental official fees.
The applicant receives said search report within 9 months from the filing date of the patent application.
The patent application is published 18 months after the filing date.
Within 21 months from the filing date, a reply to the communication with which UIBM sent the research report shall be given.
The possible granting of the patent usually takes place a few years after this response to UIBM.
ADVANTAGES OF FILING A PATENT APPLICATION IN ITALY
From the date of filing the application in Italy, the priority year for the purpose of extensions abroad begins, maintaining the Italian filing date. In this priority year the applicant can perform further experiments, tests for the optimization of his invention.
The search report sent by UIBM and drawn up by EPO offers the applicant a useful tool to evaluate, on the basis of the previous documents emerged from the search report, the opportunity to extend the patent application to foreign countries.
MAINTENANCE OF PATENTS
The validity of patents for industrial inventions is 20 years from the filing date.
To keep the patent alive, annual maintenance fees must be regularly paid, starting from the fifth year of the patent application and within the last working day of the month of filing (the first four annuities are included in the deposit, included in the costs of the application itself).
Once the deadline has elapsed, payment is allowed in the following six months with the application of a late payment fee.
If the payment of the maintenance fee is not made within the last day, the title is declared forfeited and becomes public knowledge.
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European Patent
The European Patent Convention – CBE, signed in Munich on 5 October 1973, allows every citizen or resident of a Member State to make use of a single European procedure for the granting of patents.
The holder of a European Patent, once the patent has been issued and the national validation procedure in the designated countries has been completed, obtains the same rights that would derive from a national patent obtained in those same countries.
The Office in charge of granting European Patents is the European Patent Office-EPO, an intergovernmental organization founded on the basis of the aforementioned Munich Convention with the task of examining and granting European Patents.
It is headquartered in Munich, with a department in Rijswijk (The Hague) and offices in Berlin and Vienna.
Currently the member states of the Convention are: Albania, Austria, Belgium, Bulgaria, Cyprus, Croatia, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Iceland, Liechtenstein, Lithuania, Latvia, Luxembourg, Malta, Monaco, Norway, the Netherlands, Poland, Portugal, the United Kingdom, the Czech Republic, the Republic of Macedonia, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and Hungary.
Thanks to agreements with the European Patent Office, even the following states that are not party to the Convention can be requested through a European Patent application:
Bosnia and Herzegovina and Montenegro (Extension States).
Morocco, Moldova, Tunisia and Cambodia (validation states).
The application and issue procedure for a European Patent consists of several phases..
FILING OF THE APPLICATION AND SEARCH
The first phase includes thefiling of the application and, carried out by E.P.O., the examination of the formal conditions, the search of anteriority, , the publication of the application and the search report accompanied by an opinion on the patentability of the invention within 18 months from the date of filing or priority date, if claimed. The search report provides the applicant with the information necessary to decide whether or not to continue the application process and, based on the search report, how to possibly continue.
EXAMINATION OF THE APPLICATION
This first phase is followed by the actual examination phase, carried out by a competent Examination Division. At this stage, the Examination Division can raise disputes, objections, notify observations and request clarifications regarding the invention. The applicant is required to respond within the time limits established by the EPO. During the examination procedure, the field for which protection was initially requested may vary greatly, it may be necessary to revise the application text on the basis of the Examiner’s objections.
The examination of the application may lead to the rejection of the application or the issue of the European Patent.
Against the rejection of the application it is possible to appeal.
GRANT AND VALIDATION
In case of grant, within 3 months from the date of mention of the grant in the official bulletin (to be considered as the grant date), to keep the patent alive in the designated States, the patent owner will have to comply with the laws of each single State (phases of validation of the Patent European). In many States, it is necessary to provide for the filing of the translation in the relevant official language of the claims and/or of the complete text of the European Patent as granted; if this does not happen within the established terms, the patent application is considered abandoned in that particular State.
Under the London Agreement, which entered into force on 1 May 2008, some states no longer require the translation of the European Patent. At the moment, Italy has not yet joined this Agreement.
OPPOSITION
The last stage is represented by the opposition ptocedure. Within 9 months from the date of granting of a European Patent, any interested party may file an opposition against the definitive granting of the European Patent itself. The opposition is examined by the competent Opposition Division and, at the end of the examination, the patent can be revoked or confirmed (even in an amended form). An appeal can be lodged against the decision of the Opposition Division at the Appeals Chamber.
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PCT
The Patent Cooperation Treaty – PCT is a multilateral treaty managed by the WIPO (World Intellectual Property Organization), to which 153 Contracting States now adhere.
The complete list of member states is available at the link >http://www.wipo.int/pct/en/pct_contracting_states.html).
The Treaty aims to unify the procedure for filing a patent application simultaneously in several member countries, avoiding the filing of multiple national/regional applications at the competent offices of each of them.
The advantage of the PCT system, compared to individual national filings, is essentially that of being able to postpone the timeframe for the choice of States or regional organizations in which the applicant is interested in requesting the granting of the patent, which otherwise would remain fixed in 12 months from filing date of the first application, according to the Paris Convention.
In this regard, obtaining a Research Report during the international stage and the possibility of requesting a Preliminary Examination and obtaining the relevant Preliminary International Examination Report are important elements for assessing the patentability requirements. In fact, these Reports, although not binding, can influence the subsequent examination of merit that will be carried out in the various States once the national phase has begun, leading, if positive, to a faster and less expensive grant of the patent.
The procedure for obtaining a patent through the PCT system is divided into two phases:
. a first unified international phase, managed by WIPO;
. a subsequent national phase for each member state of the cooperation treaty in which the applicant intends to obtain the granting of the patent, which is governed by the national rules of each state.
INTERNATIONAL PHASE: :
Includes:
- 1. Filing of an international application at the Receiving Office represented by a national office, a regional office or directly WIPO directly. Therefore, for an Italian applicant, the Receiving Office can be the Italian Patent and Trademark Office-UIBM
- 2. Issue by the International Research Authority-ISA of an International Research Report and aWritten Opinion in which an initial preliminary opinion on the patentability requirements is expressed.. This preliminary opinion is not binding for the continuation of the procedure, but the applicant can derive an initial assessment from it about the possibility of obtaining the grant of the patent, with the possibility of modifying the claims of the patent application on the basis of the earlier documents cited in the International Research Report.
- 3. Optionally, in the international phase, and within a deadline of 22 months from the date of filing, the applicant can request a preliminary examination of the application, which ends within the 28th month.
The end of the international phase is set at 30 months from the filing date of the international application, or from the priority date.
By this deadline, entry into the national phases of the states concerned or regional organizations must be initiated. For regional organizations, this deadline is set at 31 months.
Failure to enter the national phase or phases with regional organizations, within the prescribed time limit and according to the prescribed law of the designated State, entails the cessation of the rights of the application for the State in question.
NATIONAL PHASE
This phase takes place directly at the industrial property offices of the States or at the designated and selected regional organizations.
In this phase, the applicant must file a request in each country, pay the prescribed fees, provide the translations requested by the individual contracting states (or regional organizations) and any other documentation required by the national legislation of that state.
Where this is foreseen, the patent application will then have to undergo any examination of merit in the individual States (or Regional Organizations.
At the end of the national phases, in the individual confirmed States (or Regional Organizations), the patent may be granted or denied.
