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.

Italy is a registration country, that is to say no novelty examination is being carried out. However, the Italian Patent Office is effecting a sort of examination not only to verify whether the formalities were duly respected or the invention falls in one of the non patentable categories, but also if the invention is notorious or can be implemented with means of common knowledge without any inventive effort. In this case the Patent Office can request the conversion into a utility model or even can reject the application and it is generally difficult to obtain a reversal of the decision in the appeal stage.

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 now possible to enter the national phase in Italy starting from a PCT international application. In other terms, a PCT applicant wanting to obtain protection in Italy, must either 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 or finally enter the national phase.

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

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

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.

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.