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:

In principle, software is protected by copyright law.

In particular, in fact, both in Italy with the law on copyright and at an international level, the software in its source codes and object codes is compared with literary works.

Therefore, copyright protects the source codes and object codes, but not their function.

To enjoy copyright protection, the software must be original with respect to pre-existing software.

Software protection arises automatically with its creation and the rights that are acquired are of two types: moral and patrimonial. The moral right is inalienable, while the patrimonial rights can be transferred and consist essentially in the rights of economic use (i.e. the right to publish, distribute and market the software).

These rights are recognized to the author of the software, i.e. to whoever created the program; however, if the author is an employee who created the software in the context of the employment relationship, the rights of economic exploitation belong to the employer or to the client.

The software can be filed with the public register for software set up at the SIAE in order to obtain a sure proof of authorship.

On the other hand, not all kind of software can be protected by a patent for invention.

To be patentable, software must provide a technical solution to a technical problem and meet the normal requirements for the patentability of inventions, in particular novelty and inventive step.

There must therefore be an additional “technical effect” with respect to the normal interaction of the software with hardware devices. For example, accounting programs are not patentable, since they represent solutions to an economic problem and not to a technical problem.

Distinguishing between patentable software from non-patentable software is often complicated and requires a case-by-case evaluation by an expert.

Our firm provides:

– assistance in the field of copyright for software;

– assistance in the transfer and licensing of software.

The utility model patent is a patent title that allows to protect those inventions that present improvements such as to confer a particular utility, or convenience of use or application, to machines or parts thereof, tools and utensils.

Industrial processes, chemical and biotechnology products and electrical/electronic circuits cannot be protected with a utility model.

The utility model must have more or less the same requirements as an invention patent, even if the level of inventive step is lower than that required for an invention patent.

The utility model is, therefore, particularly suitable for that type of invention which, despite being new and having a certain inventive character, would hardly be accepted by the patent office as real “inventions”.

The applicant of an Italian patent for an industrial invention is allowed to submit a simultaneous application for a utility model, to be asserted in the event the first is not accepted or is only partially accepted by the Italian Patent and Trademark Office-UIBM. If the application concerns a utility model rather than an invention, or vice versa, UIBM invites the interested party to modify the application itself, which takes effect from the date of the original submission. .

Not all countries have the utility model

In Europe the utility model is foreseen, for example, in: Albania, Austria, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Czech Republic, Moldavian Republic, Poland, Portugal, Slovenia, Spain, Turkey, Ukraine and Hungary.

Other countries where the utility model is recognized are: Australia, Brazil, China, Japan, Russia, South Korea and Taiwan.

FILING OF THE APPLICATION AND GRANTING PROCEDURE

Only a formal examination by UIBM is foreseen for utility model applications.

In fact, for the utility models, that research, accompanied by the written opinion issued by EPO for invention patents as a result of a cooperation agreement between UIBM and EPO, is not envisaged.

After a few years from the filing date, UIBM proceeds to grant the utility model patent definitively.

VALIDITY AND MAINTENANCE

The utility model has a validity of 10 years from the filing date of the application.

At the end of the first five-year period, a maintenance fee must be paid for the second five-year period.

We offer technical-legal assistance in defense of the industrial property of our customers in Italy and abroad, in particular:

– both active and passive trademark opposition procedures before UIBM/Roma;

– both active and passive trademark opposition procedures before EUIPO/Alicante;

– opposition procedures before the European Patent Office (EPO)/Monaco;

– evaluation and opinions on the validity and infringement of patents, utility models, models/design;

– evaluation and opinions on trademark counterfeiting;

– assistance in judicial and extra-judicial actions for counterfeiting, nullity and unfair competition in the field of patents, utility models, designs/models and trademarks;

– evaluation of the activability of our customers’ patents and trademarks with respect to third parties;

– assistance in the negotiation, preparation and drafting of licensing and assignment agreements for patents, utility models, models/designs;

– assistance in the assignment of individual trademarks or entire trademark portfolios;

– assistance in the negotiation, preparation and drafting of license and distribution agreements in relation to trademarks.

All signs, in particular words, including personal names, or figures, letters, numbers, colors, shape of the product or its packaging, or sounds may constitute a trademark, provided that such signs are suitable to distinguish the goods or services of one firm from those of other firms.
A trademark must:

• Have distinctive capacity: it cannot be limited to words descriptive of the covered goods or the type of activity carried out by the trademark owner.
• Be lawful: it cannot be in conflict with public order and must not violate the provisions of the law (for example, a mark that is against morality is refused.

A trademark can be distinguished in :

• word mark, which consists only of words
• figurative mark, which consists of a figure or a reproduction of real or imaginary objects. For filing purposes, a combined trademark (consisting of words and figurative elements) is also considered figurative
• shape or three-dimensional mark, which consists of a three-dimensional shape and which may include containers, packaging, the product itself or its appearance

Recently introduced into the national discipline there are sound, motion, multimedia and holographic marks.

Finally, there is the collective mark which is that trademark that distinguishes goods and/or services of several companies that performs a guarantee function for consumers, because it guarantees that the products or services bears certain characteristics regarding their origin, nature or quality.

In fact, an application for a collective mark requires the filing of a Regulation of Use establishing who and how can use this mark.

The collective mark is used by several subjects other than the owner, who usually does not use it. The owner can be any subject who performs the function of guaranteeing the origin, nature or quality of certain products or services, and the required quality standards and related controls have to be provided for in the specification, as well as the indication of the person in charge of the control same. Once the registration has been obtained, the owner of the trademark will grant its use to those who request it and the latter will use it legitimately in compliance with the filed Regulations for Use.

The design/model protects the appearance of the entire product or a part thereof which results, in particular, from the characteristics of lines, contours, colors, shape, surface structure and/or materials of the product itself and/or its ornament.

A design/model is new if it has not been disclosed prior to the date of the application for registration, while it is considered to possess individual character when it arouses in the informed user a general impression different from that aroused by any other product previously disclosed.

Protection therefore concerns the aesthetic or decorative aspect of a product, and not its technical or functional characteristics.

By product we mean any industrial or handcrafted object including, inter alia, the component parts that must be assembled to form a complex product; packaging; presentations, such as Internet pages and billboards; graphic symbols and typefaces, excluding computer programs. By complex product we mean a product consisting of several components that can be replaced, allowing the disassembly and re-assembly of the product.

The protection of models and designs is a key element in the commercial strategy of a company because a design or model adds value to a particular product making it more attractive to the eyes of the consumer.

In Italy, all intellectual works that are original and with a creative character can be protected by copyright. Copyright applies to a wide range of works, for example, the visual arts, music, literature, architecture and engineering, theater, cinema, computer programs and databases.

The copyright arises on the creation of the work and no formal fulfillment is required in order to obtain the recognition of the copyright on a certain work.

However, the fulfilments used, such as the filing or registration of a copyright, are important in order to have a certain date and an identified content.

The author, generally the person creating the work, is granted a series of moral and patrimonial rights.

Moral rights, which arise once the work is created, are inalienable, that is, they survive even in the event of transfer of the rights of economic use, and are temporally unlimited.

For author’s moral right we mean the rights of the author:

– to the authorship of the work, that is his right to be recognized as the author of the work;

– the integrity of the work, i.e. the right to forbid any modification of the work that in some way may damage its reputation;

– to publication, i.e. the author’s right to decide whether or not to publish the work.

Patrimonial rights, or rights of economic use, consist of all those actions that allow the author to achieve an economic advantage. These rights include the right to reproduce the work in any way and form; the right of distribution, therefore the right to put the work on the market, the right to diffuse the work, for example through TV, radio, Internet, etc., the right to elaborate, therefore to modify the original work , etc.

In Italy, patrimonial rights on an author’s right have a duration in time that runs from the moment of creation of the work until, in general, the end of 70 years, after the author’s death.

TERRITORIAL PROTECTION OF COPYRIGHT

Outside Italy, protection of copyright finds its main source in the Berne Convention for the protection of literary and artistic works, also ratified by Italy and also known as the Universal Convention on Copyright, adopted in Bern in 1886.

This Convention is an International agreement for the first time establishing the mutual recognition of copyright between a number of states on all continents: each contractor must recognize as subject to copyright also the work created by citizens of the other states that adhere to that Convention. Protection is automatic and no deposit or registration is required. Furthermore, the signatory nations are prohibited from requesting any formality that could hinder the enjoyment and exercise of copyright, such as, for example, a registration of foreign authors.

Finally, there are other international conventions which protect the interests of authors, such as the Universal Convention of Geneva and the Rome Convention which protects artists and performers.

A domain name is the name associated with a website. As such, the domain name is a real distinctive sign which, as for a trademark, must be registered, has an expiry date, needs protection and can be used against third parties.

Our services in the field of domain names include:

. searches on assignable domain names;

. domain name registration procedure;

. verification of domain names;

. management of portfolios of domain names, with expiration and renewal notices;

. searches for identical domain names in all available extensions.