Patents of invention

The italian intellectual property laws

A diversified range of provisions and regulations

The Italian laws governing the various aspects of intellectual property underwent a radical modernization in the recent years and this process is still going on. Italy is a member of practically all existing International Conventions in the field of Intellectual Property such as:

  • Paris Union Convention
  • Strasbourg Agreement concerning the International Patent Classification
  • Budapest Micro Organisms Treaty
  • European Patent Convention (EPC)
  • Patent Cooperation Treaty (PCT)
  • Madrid Agreement and Madrid Protocol for the International Registration of Trade Marks
  • Nice Agreement for the International Classification of Goods and Services
  • European Community Trade Mark Convention
  • Locarno Agreement for the International Classification of Industrial Designs
  • Hague Agreement for the International Registration of Designs
  • International Union for the Protection of New Varieties of Plants (UPOV)
  • Berne Convention for the Protection of Literary and Artistic Works
  • Universal Convention for the Protection of Literary and Artistic Works
  • Hague Convention abolishing Consular Legalizations

Italy has implemented the various EEC Directives and Regulations in this field, such as the Regulations concerning the Supplementary Protection Certificates for Pharmaceutical and Plant Protection Patents, the Software Protection, the Protection of Semiconductor Chip Design, the Protection of Appellations of Origin. Italy is also a member of the World Trade Organization (WTO) and has amended the I.P. laws to harmonize them with the compulsory provisions of the Agreement on Trade Related Aspects of Intellectual Property (TRIPs).

From 2005 the Industrial Property in Italy is regulated by the Italian Code of Industrial Property. This code unified into a single law all the provisions concerning patents, models and designs, trademarks, and related special technical fields while copyright and unfair competition remain covered by specific laws.

When in the following pages there is reference to Legislative Decree No. 30, this is the official name of the Italian Industrial Property Code, that was recently amended together with the corresponding Implementing Regulations.

 

Patents of invention

Legislative Decree No. 30 of February 10, 2005

The Italian Patent law is largely harmonized with the European Patent Convention (EPC) but it has also many peculiar provisions, more particularly concerning inventions of service, infringements, working and administrative proceedings.

Although patent applications are normally laid open to public inspection 18 months from the filing date or priority date, it is possible to request that the application be laid open at the end of the 90 days secrecy period. Moreover, the rights can be enforced even before the 18 months term if a copy of the application is served to the alleged infringer.

A patent should be worked within 3 years from grant date or 4 years from filing date and working should not be discontinued for more than 3 years. Importation of articles manufactured in any country of the European Union is considered working.

It is important to note that it is not possible to enter the national phase in Italy starting from a PCT international application because Italy, like many other EPC member countries, closed the national route. In other terms, a PCT applicant wanting to obtain protection in Italy, must enter the European regional phase, follow the examination procedure before the EPO and if and when the European patent is granted, then validate the patent in Italy by filing the Italian translation of the granted patent specification within the unextendable term of three months.

As from the year 2009, substantive examination was introduced for all national patent applications that do not claim a Convention priority from a foreign basic application. These applications are considered to be first filings and are sent, accompanied with an English translation of the claims, to the European Patent Office (EPO) that delivers a Search Report and a patentability written opinion. Upon receipt of the search report, applicant can file arguments and amend the application, and then the Italian Examiner will decide whether a patent should be granted or refused, with a possibility with a further exchange of of communications between Applicant and Examiner and /or appeal in case of refusal.

On the contrary, national patent applications claiming a Convention priority are registered without any novelty examination, as in the past. In both cases the Patent Office can request the conversion into a utility model where the protection is granted for a term of 10 years from the filing date.

FOREIGN FILING LICENSE

It is important to point out that a person of any nationality bur resident in Italy must obtain an official permission for filing a patent application directly abroad. This is particularly important for foreign companies that want to file a patent application in their own country or any other foreign country, for an invention made by a person resident in Italy, even if it was developed together with other foreign Inventors.

Our office has a wide experience in solving these sometimes complex problems

 

Design and models

Legislative Decree No. 30 of February 10, 2005

The Italian Industrial Property Code has a section dedicated to these kinds of rights, that in most countries are regulated by two separate laws as there is very little in common between designs that protect ornamental or shape features and utility models that cover innovations which do not reach the inventive level required for an invention patent. Indeed an article having both decorative and utilitarian characteristics may be protected at the same time with a utility model patent and a design patent.

As far as the designs are concerned, it is possible to effect the so-called multiple deposit, by which several designs may be combined in one multiple application, if they fall in the same class of the Locarno Agreement for the International Classification of Industrial Designs.

Generally speaking, utility models follow the rules of the invention patents. Thus for instance they are laid open to public inspection 18 months after the filing or priority date, while ornamental designs are immediately available for inspection, as soon as the files reach the Italian Patent Office from the various provincial deposit offices, but applicants can request to postpone the availability to the public up to a maximum of 12 months from filing or priority date.

Filing requirements for Italy

National Patents

  1. Unlegalized power of attorney (term for late filing: 2 months).
  2. Abstract, description and claims in Italian, or to be translated into Italian.
  3. Declaration of inventor signed by inventor(s) and applicant(s); however, the form can be filled-in and signed by local agent (term for late filing: 2 months).
  4. Drawings, size A4 – 210 x 297 mm (term for late filing: 2 months).
    In Convention cases only:
  5. Certified copy of foreign application(s) (term for late filing: 6 months); claiming multiple or partial priorities possible. A word by word Italian translation must be attached thereto.
  6. Assignment of priority rights to be executed before the filing date in Italy, only if the applicant in Italy is other than the applicant abroad. When the applicant in Italy is one of the original joint applicants, the assignment is no longer required. Notarization required. Consular legalization required unless for countries having ratified The Hague Convention of October 5, 1961 on the abolition of legalization of documents, in this case legalization by “Apostille” is required (term for late filing: 6 months).

 

Translation of European Patents (Validation)

  1. One copy of the specification, claims and drawings, if any, in the language of the proceedings (English, German or French).
  2. Copy of the decision to grant the European patent or to maintain it in amended form after opposition and/or appeal.
  3. Power of attorney, in Italian, simply executed by the Patentee (term for late filing: 2 months).
    Translation of the Claims of European Applications:
    The above items 1, 3 and 4 for the translation of granted European Patents are required also to file the translation of the claims for obtaining the same provisional protection accorded to the Italian national patent applications. Copy of the first page of the published European patent application (containing the abstract, the translation of which is required by the Italian Patent Office for information purposes only).

 

PCT Applications

Italy is a member of the Patent Cooperation Treaty and the Italian Patent Office is only a Receiving Office. However, it is not possible to enter the national phase in Italy from a PCT application filed in another country. For more details see under “Patents of Invention“.

 

Trademarks

  1. Unlegalized power of attorney (term of late filing: 2 months).
  2. A good print of the mark, not required for word marks.
  3. Detailed list of goods and/or services to be covered.
    For Convention cases:
  4. Certified copy of foreign trade mark application (term for late filing: 6 months). A word by word translation into Italian must be attached.
    For Community Trademarks:

    The above documents sub point 1. Two prints of the mark are sufficient. For on-line filing we need to receive the device in “.jpg” format. To claim seniority of a prior national registration in a EU country, complete copy of the registration and of any renewal thereof.
    NOTE
    : Both the Italian national law and the Community Trademark Regulation allow to cover any desired number of classes of goods and/or services with a single application.

 

Designs and Models

  1. Unlegalized power of attorney (term for late filing: 2 months).
  2. Specification in Italian (for designs a description of the drawings is generally sufficient), or to be translated into Italian.
  3. Drawings (prints, photographs or any other reproduction). Size A4 – 210 x 297 mm. In the case of textile products, e.g. 4. fabrics, samples can be filed instead of representations.
    In Convention cases only:
  4. Certified copy of the foreign patent or design application(s) including drawing or reproduction and specification, if any (term for late filing: 6 months). A word by word Italian translation must be attached thereto. Claiming multiple or partial priorities possible.
  5. Assignment of priority rights (see under Patents, point 6).
    NOTE
    : for multiple deposits the order in which the drawings are to be submitted should be indicated.
    For Community Designs:

    The above documents sub points 1 and 4 (Certified copy of design application in Convention or Exhibition cases). Claiming multiple or partial priorities is possible. Drawings or photographs (ideal size of views: 8 cm x 16 cm) of a professional quality with no symbols (arrows, letters, etc.).

 

GENERAL REMARKS: all the 2 months terms regarding Italian applications can be extended for an additional term of about two months by filing a proper petition, or possibility to a maximum of 6 months from the original filing date or date of an official communication.

 

Semiconductor Chips

  1. Documentation allowing identification of the topography sought to be protected; such documentation must be submitted in A4 (210 x 297 mm) format or in another format that can be folded to A4 format and may comprise drawings or photographs showing the configuration of the layers of the semi-conductor product, or the masks or parts of masks for the manufacture of the semi-conductor product or its individual layers. An optional description may be filed allowing a better identification of the topography or the most characteristic parts thereof as well as any other document adapted to identify it.
  2. Declaration certifying the date of the first commercial use of the topography and the legal relationship between applicant and person who carried out the first commercial use, if other than applicant.
  3. Designation of the author(s) of the topography.
  4. Power of attorney.

 

Plant patents

  1. Full name of applicant(s), his nationality and domicile, as well as title of application which should comprise the genus or the species of the new variety and, in a precise and concise form, the main distinctive features thereof.
  2. The designation proposed to identify the variety (plant denomination). In case said designation has already been accepted in another member state of UPOV the same designation must be used.
  3. The designation of the breeder. If the breeder is the only inventor, this must be stated in the application and no separate breeder designation form must be filed.
  4. A declaration providing i.a. information on examination of corresponding applications in other countries.
  5. Power of attorney.
  6. Specification, claims and abstract.
  7. Drawings or photographs in triplicate.
  8. If priority is claimed, priority documents with the Italian translation and Priority Assignment with same rules as for patents.
  9. Any other document or information that applicants consider useful for examination of the application.

 

Intellectual property litigation

Here skilled strategy is a must

In absence of opposition or invalidation proceedings to be held before the Patent Office, all disputes in Italy for intellectual property matters must be brought before the courts.

A restricted number of specialized courts handle the lawsuits related to the intellectual property laws, being entitled to issue decisions in these matters. These decisions can however be revised by a little number of Courts of Appeal.

A useful provision of the Italian I.P. laws is the rather quick and easy way to obtain a court order allowing the plaintiff to inspect and describe the products or processes of the alleged infringer so as to obtain the proof of the infringement. The plantiff can obtain an interlocutory injunction stopping the production and sale of the infringing goods but he must then start a regular lawsuit to validate the injunction.

The judges are assisted by neutral experts that will give them technical assistance during an expertise in which the parties have the right to attend with ex-parte experts who are submitting arguments in support of their own party.

Our firm has a wide reputation in assisting the trial lawyers in the course of a litigation. Our members are frequently involved in technical expertises before the courts and inspections of infringing enterprises ordered by judges, seizure of counterfeited goods and all kinds of interlocutory measures ordered by the courts.

Unfortunately there is a huge backlog of lawsuits in the Italian courts so that a decision in the first instance can be expected only 3-4 years from the date of serving the summons writ, and approximately the same time can be estimated for the appeal stage.

Our firm is an active member, since its foundation, of INDICAM, the Italian Anti-Counterfeit Committee of the Brand Names, and assists the Clients in the civil and criminal actions against counterfeiters of their goods and/or services and infringers of their rights.

PATENT SEARCHES

Quite often a patent dispute or litigation requires name index and/or subject matter searches at various levels and a corresponding examination of the results and related opinion. Our firm is well known for a quick and reliable service for any kind of search for all categories of IP rights.

 

Customs action against counterfeits

Holders of Intellectual Property rights may request customs authorities to prevent the entry into member states of the European Union of goods infringing his rights. The applications for customs action may be based on any kind of IP right covered by the relevant laws of the country involved.

The application for customs action must be accompanied by proper documentation describing his goods suspected to be infringed and any pertinent information about the provenance of the infringing goods and their recipients.

If such goods are found, the customs office suspends the release of the goods and invites the holder to inspect the goods within 10 days. If the holder recognizes the goods as counterfeited, criminal proceedings are started automatically, otherwise the goods are released.

The application for customs action has a one year duration and its renewal is possible. Our office is ready to assist the holder in these proceedings.

Licensing and transferring IP rights

Once an IP right is obtained, often such a right is involved in a commercial transaction. One possibility is that the owner grants to another party an exclusive or non-exclusive license to make, use and/or sell the relevant products. Another possibility is the assignment of his rights to another party.

Our firm is frequently involved in this kind of transactions, which are very often complex and required deep knowledge of IP, commercial, corporate and fiscal laws and regulations.

Our firm can assist the clients in the negotiations, drafting the contracts, registering and recording the contracts at the corresponding governmental offices in Italy and abroad.

In case of disputes arosen during the file of the contract, our office can assist clients in extrajudicial proceedings (mediation and arbitration) and lawsuits.