In order to be protected, patents must first and foremost be registered. Only in this way is it possible to fully protect one's ideas and investments and, simultaneously, acquire additional economic resources through the management of the related rights of use.
What are patents?
At the core of the patent system is the desire to prevent the protection of innovation from being entrusted solely to the insecure regime of trade secrets.
Patents for innovation represent the legal instrument through which the legal system ensures the inventor the right of exclusive use of the invention for a certain period. This guarantees the inventor against the risk of the secret being destroyed, because the exclusivity will last for the time fixed by law, regardless of whether others are able to realize the same invention.
It follows, therefore, that patents are commercial tools that allow companies to:
- protect their investments in research and innovation, preventing others from using the fruits of such activities for free;
- acquire additional economic resources through the economic management of their rights of use.
What can be patented?
The discipline governing patents for innovation formally presents itself as a system of general application, offering undifferentiated protection to inventions in any field of technology.
Quoting the Ufficio Italiano Brevetti e Marchi (UIBM – Italian Patent and Trademark Office) of the Ministry of Economic Development:
New inventions that involve an inventive step and are susceptible to industrial application may be the subject of a patent. In practice, simple intuitions or ideas devoid of any concrete implementation are not considered inventions and, therefore, are not patentable. For example: the simple demonstration that hydrogen is a source of energy is a non-patentable discovery, whereas the application of that discovery for the purpose of creating an engine that produces energy using hydrogen is, conversely, patentable.
Therefore, pure ideas are not patentable, but their implementation is. For example, if ideas are materialized into products that are unique and original, then they can be protected through patents. Or, if the idea consists of a process aimed at solving a technical problem, such a process is patentable.
In addition to patents for new inventions, these limitations apply to utility models, i.e., those inventions that improve or modify an invention/application already patented.
Why patent?
Today, the value of many companies is 90% comprised of so-called intangible assets, consisting mostly of industrial property rights. With patent protection, it is possible to prevent others from patenting identical or similar inventions and also from infringing the rights of use (production and marketing) covered by the patent. Possessing a strong patent provides concrete possibilities of achieving success in legal actions against those who copy the protected invention.
It is also worth remembering that for a company, a good patent portfolio can be perceived by commercial partners, investors, shareholders, and customers as a demonstration of the high level of quality, specialization, and technological capability of the company itself, thereby enhancing its positive image.
How are patents protected?
Patents represent an enrichment for the company and therefore must be protected in the best possible way.
Registering patents is, consequently, a necessary activity in order to protect one's innovations and investments.
Registering one's patent, however, is not always sufficient. After the registration of patents for products that are new or, in any case, better than previous successful ones, it is likely that competitors will sooner or later try to manufacture products with technical characteristics similar or identical to those of the original product. In some cases, competitors may benefit from economies of scale, faster market access, or cheaper raw materials and, consequently, may manufacture an identical or similar product at a lower price.
When it is suspected that someone is infringing a patent, i.e., using it without authorization, it is first necessary to identify the parties committing the infringement, as well as the product (or process) in question. It is then necessary to collect all available information in order to identify the most appropriate action to be taken, from a cease-and-desist letter to judicial proceedings.
Infringed patents: how to act?
In some cases, when infringement is identified, companies decide to send a communication (commonly called a "cease-and-desist letter"), informing the alleged infringer of the possibility of a conflict between their rights and the other company's commercial activity. This procedure is often effective in cases of unintentional infringement: it is likely that the party responsible will, in many cases, cease the unlawful activity or agree to negotiate a license agreement.
Precautionary measures
Sometimes, however, timeliness is the best strategy to avoid giving the infringer time to hide or destroy evidence of the infringement. In such cases, it may be appropriate to initiate a lawsuit without prior notice, requesting a "provvedimento cautelare" (precautionary measure/injunction), in order to surprise the infringer with a raid—often with the help of the competent police authorities—on the premises of the infringer's company. The court may order those guilty of the alleged infringement to:
- provide a description of the infringing patent or mechanism;
- be subject to an injunction against the unlawful action, i.e., the cessation of all illegal activities such as, for example, the manufacture or sale of products made using the patent in question;
- publish the court order.
Judicial proceedings
However, the question of whether a patent has been infringed or not can be very complex, with the consequence that any final decision can only occur after the trial phase on the merits, during which the judge summons witnesses, interrogates the parties, orders court-appointed technical expert reports ("consulenze tecniche d'ufficio"), and acquires all documentation useful for the decision. If, at the end of the proceedings, the judge confirms the infringement, the patent holder can obtain a judgment prohibiting the manufacture or marketing of whatever derives from the infringement of the right; or that the produced objects or the means of production used be assigned to them in ownership; or further, that they be ensured fair compensation for the damages suffered (loss of profit, moral damages, etc.).
Arbitration and mediation
As an alternative to judicial proceedings, it is possible to resort to alternative dispute resolution systems, such as arbitration and mediation, which allow for the avoidance of long and costly trials. Arbitration or mediation clauses are often included in contracts between companies, such as those providing for a licensing agreement, specifically to resolve disputes quickly. Generally, arbitration has the advantage of being a less formal and shorter procedure compared to ordinary procedures before the courts, and an arbitral award can more easily be enforced internationally. One advantage of mediation, on the other hand, consists in the circumstance that the parties maintain control of the mediation process. This feature can serve to maintain good commercial relations with the other enterprise, with which it might be useful to collaborate in the future.
Monitoring procedure – Customs protection
Another form of protection that can be implemented consists of the customs control procedure for goods protected by patents (valid for one year and renewable for subsequent one-year periods), for which it is necessary to submit a simple application to the Agenzia delle Dogane (Customs Agency) located in Rome, indicating which patents the owner wishes to monitor—sending a simple copy of the relative registration certificates—while also filling out a so-called "Dichiarazione di Responsabilità" (Declaration of Responsibility) and providing as much information as possible to help customs agents distinguish a genuine product from a counterfeit one.