|COMPETENCE||U.I.B.M. (Ufficio Italiano Marchi e Brevetti) is the department of the Minister for the Economic Development responsible for registering patents, trademarks and designs.|
|PATENTABLE SUBJECT-MATTER||Any products or processes, in all field of technology, provided that they are new (absolute novelty required), involve an inventive step and are susceptible of industrial application. The following shall not be regarded as inventions (to the extent to which an application relates to such subject-matter or activities as such):
(a) discoveries, scientific theories and mathematical methods;
(b) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(c) presentations of information.
Italian patents shall not be granted in respect of:
(a) plant or animal varieties or essentially biological processes for the productionof plants or animals; this provision shall not apply to microbiological processes or the products thereof;
(b) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
20 years as from the date of the filing of the application. Renewal fees are due starting from the 5th year. It is also possible to belatedly pay the renewal fee up to six months after the due date, provided that a surcharge is paid.
|RIGHTS||An Italian patent of invention shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product or a process having features within the scope of the granted claims, or equivalents thereof.|
|PRIORITY||Italy is part of the Paris convention, and therefore it is possible to claim the priority date of one or more foreign applications filed not earlier than 12 months before the filing date. A certified copy of the priority application is to be filed, together with an Italian translation thereof.|
|LANGUAGE||The application can be filed in any language. However, a translation into Italian is to be filed within 60 days from filing.|
|EXAMINATION||The Office carries out only a formal examination, and therefore no request for examination is to be made. As from July 2008, Italian first filing patent applications (i.e. claiming no priority) undergo a novelty search carried out by the EPO, generally within 6 / 9 months from filing. A mandatory reply to the Search Report (which is drawn up with a Search Opinion) is generally due within 21 / 23 months from filing.|
|VOLUNTARY AMENDs||Voluntary amendments (obviously within the content of the application as filed) are possible up to the grant of the application. After grant, only limitations to the scope of protection as granted are possible.|
|DIVISIONAL APPLs||The filing of one or more divisional applications, both voluntary and mandatory upon an invitation of the Office, is possible up to the grant of the application.|
|GRANT||No granting and printing fees are to be paid, nor particular procedures are to be followed. Upon granting of the application, the Office simply emits the grant certificate and mentions the grant into the electronic bulletin.|
|INVALIDITY/OPPs||No opposition procedure before the Office is provided. Invalidity of a patent is only to be challenged before an Italian Court.|
|APPEALS||An appeal may be filed against the decisions of the Italian PTO (e.g. against the refusal of an application) within 60 days from the notification of the decision.|
|CONVERSION INTO UTILITY MODEL||A patent application may be converted into a utility model application, both voluntarily and mandatorily upon an invitation of the Office, up to the grant of the application. After grant, the conversion is possible but is to be established by an Italian Court.|
|EUROPEAN PATENT||Italy is part of the European patent convention, and therefore can be designated in a European Patent. Once granted, the European patent designating Italy is to be validated in Italy.|
|PCT||Italy cannot be directly designated or elected in a PCT application. The only way to obtain protection in Italy starting form a PCT application is through the European Regional phase (information on request).|
|MEANS OF REDNESS||Further processing and Re-establishing of rights are possible.|
|NOTICE||To inform the public and the competitors, it is recommended to use wording "Patent pending" with the application number on the products/packaging/advertising, and "Patented" with the granting number when the patent is granted.|
|LEGAL ACTION||Italian I.P. Code allows starting a legal action (ordinary proceedings and/or summary proceedings to obtain description, seizure or summary injunctions) on the base of a utility model application.|
|RECORDAL||Any change regarding the name and place of business of the owner, assignments, licenses and any action related to the patent has to be entered into the Patent register. The registration of the assignment is necessary to enforce the exclusive rights deriving from a patent.|
|DOCUMENTS FOR FILING||
Applicant’s data (Name, address, nationality);
Inventor’s data (Name, address, nationality);
Text of the application (preferably in WORD format) and drawings (if any, preferably in DXF or JPG format);
Translation into Italian of the application (60 days from filing);
Priority document (if claimed, 6 months from filing or 16 months from priority date, whichever expires later);
Translation of the priority document (if claimed);
Power of Attorney, simply signed (60 days from filing).