Patent filing represents a crucial phase of the patent procedure, and the outcome depends largely upon it. Let us, therefore, attempt to understand how it should be carried out.
The patent procedure comprises different phases and various steps aimed at obtaining legal protection for a solution or an invention. This procedure, which concludes only with the grant of the patent, can last several years, while the costs to be incurred can be high. In today's article, we will analyze the procedural phases concerning patent filing, with particular focus on national dynamics.
Patent filing: analysis of the invention and patentability requirements
The first phase consists of analyzing the finding, the scope of the invention, and the field of application, in order to verify that the invention to be protected possesses the so-called patentability requirements described in the Codice della Proprietà Industriale (c.p.i. — Industrial Property Code).
In particular, the invention must be:
- new, i.e., not yet comprised in the state of the art;
- possess inventive step, i.e., not anticipated or obvious from the prior art;
- have industrial application (it must be capable of being manufactured and used in the industrial field); and be lawful, i.e., not contrary to public policy or accepted principles of morality.
To this end, and particularly regarding the requirements of novelty and inventive step, it is appropriate, or at least strongly recommended, to proceed with an analysis of the state of the art.
The state of the art comprises everything that has been made public (globally) by means of a written or oral description, a presentation on the Internet, use, or any other means, before the filing date. Therefore, to discover if one's invention has already been patented or before starting a research project, it is necessary to carry out a patentability search in scientific literature, with particular regard to patent documents.
Through a patent search, which can be performed on specific databases (public and free of charge or paid; national or international), it is often possible to obtain a sufficiently complete view of an entire technological sector and, consequently, to understand the degree of freedom to implement one's invention, the so-called "Freedom to Operate".
Patent filing: preparation and registration of the application
After conducting a preliminary search of the prior art and verifying that the invented finding satisfies the patentability requirements, it is necessary to prepare the application in order to file it with the competent national or regional office.
An inventor who intends to protect their technical innovation can choose different paths, depending on specific protection needs or a precise commercial strategy. However, a consolidated strategy is to proceed first with the filing of national patents, for example in the country of residence or where the legal entity to which the patent ownership will be assigned has its registered office. This procedure is associated with very low initial costs and a relatively simplified method.
For example, a translation of the patent document into a foreign language is not required (with the exception of the claims) and, furthermore, it is not necessary to instruct qualified foreign consultants.
In any case, the applicant will have 12 months from the patent filing date (priority date) to extend the request to other countries, claiming priority from the first application.
Generally, it is good practice at this stage to rely on an intellectual property expert, a specialized consultant, or a patent attorney, who will then represent the inventor's interests throughout the entire patent procedure.
Patent filing: characteristics of the application
In fact, notwithstanding the fundamental requirements seen above, the application must also present the characteristics of sufficiency of disclosure and unity of invention. These characteristics are often not fully identifiable by an untrained eye and, if not respected, risk jeopardizing the validity of the filing.
- Sufficiency of disclosure: for an application to be valid, it is required that the invention be described in a sufficiently clear and complete manner so that, once made public, a person skilled in the art has all the elements to implement it without having to conduct further research. Indeed, while on the one hand the grant of a patent confers a monopoly on the owner of the invention, so that only the latter has the right to economically exploit the patented product and/or process, on the other hand the invention must "update" the state of the art, allowing for technical progress. In the absence of this requirement, the patent may be declared null and void.
- Unity of invention: as regulated by Art. 161 c.p.i., there must be only one invention in the request. In the case of an application with multiple inventions, the Patent Office invites the applicant to amend the application within a time limit set by the Office itself. An owner who wishes to have broader protection must file as many divisional patent applications as identified by the Office, which will have the same duration as the basic application.
Patent filing: drafting the patent document
The application essentially consists of: title, abstract, description, claims, and drawings (where present):
Title: indicates the technical field of application of the invention; it must be concise, clear, and explanatory.
Abstract: provides a concise (approx. 150 words) technical indication regarding the subject matter of the invention. It must contain a summary of the invention and must be drafted so as to allow a clear understanding of the technical problem, the solution to the problem offered by the invention, and the main uses and applications.
Description: the invention is explained in detail in the description; it must be sufficiently clear and complete so that any person skilled in the art can implement it. It must include: a brief description of the technical field to which the invention relates; a critical commentary on the known state of the art accompanied by citations of known documents (literature, other patents); the technical problem to be solved and the advantages that the new invention brings to the art; a brief description of the drawings and figures; a detailed account of at least one preferred embodiment of the invention and a description of its possible industrial applications.
Claims: the claims must define the subject matter for which protection is sought, in terms of technical features. They must be clear and concise and be supported by the description. They constitute the fundamental part; it is by means of the claims that the invention and the scope of patent protection are defined. The existence of infringement is judged in court based on a comparison with the claims.
They generally provide for two parts: a first part called the "preamble" and a second "characterizing" part. The first part contains the designation of the subject matter of the invention and the technical features necessary to define it, which result as being part of the state of the art. The second part designates the technical features which, in combination with those of the first part of the claim, are the subject of the request for protection.
Claims can be "independent" or "dependent," related to a product or a process. An "independent" claim must contain all the essential features of the invention. Each independent claim can be followed by one or more "dependent" claims, relating to particular embodiments of the invention. The extent of protection conferred by the title is established through the claims. In addition to the Italian language version, the applicant is required to file the English translation of the claims to allow the prior art search to be carried out by the European Patent Office. If the translation is not submitted, the applicant is subject to the payment of a search fee. Consequently, the translation will be carried out by the UIBM (Ufficio Italiano Brevetti e Marchi — Italian Patent and Trademark Office).
Drawings (if any): Figures, diagrams, charts, etc., depicting preferred embodiments of the invention and/or explaining its operation and implementation.
Patent filing in Italy
In Italy, patent filing can be carried out online (telematic form) on the dedicated portal of the UIBM for those in possession of a digital signature, at any Chamber of Commerce, or sent directly to the Office itself located in Rome (paper form).
Both natural persons and legal entities may proceed with patent filing.
The request for patent filing (or utility model) must be drafted on a specific form and must concern only one invention.
During the filing phase, information is required regarding the person filing, the owner of the invention, the inventor or inventors, and any representatives or attorneys. All patent documents listed above must be attached to the application; at the time of filing, the Office or the designated receiving entity assigns a progressive number to the application, which will serve as an identifier.
By law, the application is subject to a secrecy period of 18 months, of which the first 90 days are mandatory and reserved for the military authorities, who have the right to verify if the invention is of interest to them. The owner may decide to make their application accessible to the public early, whereby, after the 90 days have elapsed, the application becomes visible.
All rights deriving from the patent filing belonging to the applicant are fully valid from the day of filing.
The applicant may file the application personally or through an industrial property consultant registered in the specific professional register. In the latter case, an appropriate letter of appointment must be attached to the application.
In the case of paper filing, fees vary according to the number of pages of the text. With telematic filing, the fee is fixed (50 Euro), inclusive of the filing and the first three annuities (maintenance fees). Subsequent annuities must be paid by the month corresponding to the one in which the application was filed.
Phases following patent filing
The UIBM carries out an examination of the request initially from a formal point of view and, subsequently, also carries out an examination of the application from the point of view of the substantive requirements seen above. Since July 1, 2008, every application in Italy is subject to a prior art search carried out by the European Patent Office (EPO) following an agreement reached with the UIBM.
The purpose of the EPO search is to determine whether or not there are prior documents (patents, publications, and so on) that could jeopardize the novelty and inventive level of the claimed invention.
Following the search, the European Patent Office issues (6-9 months from the filing of the application) an Italian search report, together with a preliminary patentability opinion. Should the search reveal substantive deficiencies, the applicant can thus decide whether to submit a reply (within 21 months of filing the application) to the UIBM or proceed with the withdrawal of the same.
The costs relating to the prior art search are borne by the UIBM, therefore no search fee must be paid by the applicant. During the last phase of the procedure, an Italian examiner will evaluate the search report and the patentability opinion, as well as the response to objections, and if the evaluation is positive, will proceed to the grant of the Italian patent.
Conclusions
The objective of patent exclusivity is to allow its owner – by means of a twenty-year monopoly on the invention – to reap the fruits of the investment in capital, human and otherwise, that led to said invention. The drafting of the request and the filing of patents represent a crucial phase of the patent procedure and the outcome depends largely upon them. For this reason, in order to safely handle the procedure and minimize the risks associated with it, it is strongly recommended to contact a consultant specialized in industrial property.