The duration of a patent varies depending on the type of invention, namely industrial inventions or utility models. Therefore, after the grant, various aspects related to maintenance and expiry must be taken into consideration.
How long does a patent last?
Industrial property rights have a duration of 20 years from the filing date in the case of patents for industrial inventions; 20 years from the date of grant in the case of plant variety rights; and 10 years from the filing date for utility models; subject to two conditions: that its object is implemented and that the relative maintenance fees are regularly paid.
Patent duration: what does the law provide?
The law provides that the object of the patent must be implemented within three years from the date of the patent grant and that implementation must not be suspended for more than three consecutive years. Implementation means manufacture and sale in Italy, or import and sale in Italy of objects produced in a Member State of the European Union and/or a Member State of the World Trade Organization. This means that if the applicant or their licensees have not manufactured or imported the object of the patent from such States and put it into circulation in the territory of the State to an extent that is not seriously disproportionate to the needs of the Country, this legal requirement has not been met (Art. 69 CPI - Codice della Proprietà Industriale, the Italian Industrial Property Code). Consequently, the granting of a compulsory license (Art. 70 CPI) is possible, or, in the case of persistent non-implementation, the forfeiture of the patent.
The spirit of this article of law is clear: it aims to develop industry and prevent important inventions from not being implemented due to personal interest (for example, solely to allow the patent holder to exploit their old plants), thereby blocking the sector for the entire 20-year duration of the patent.
It also appears evident, contrary to what inventors generally believe, that a long granting procedure is favorable to the inventor: in fact, since the deadline for implementation runs from the date of the patent grant, the further this date is from the filing day, the longer the time interval in which the inventor enjoys patent protection without the obligation of implementation. The legislator also addressed the reverse situation, establishing that if the grant is very rapid (less than one year), the three-year term from the grant may be replaced by a four-year term from the filing date, if the latter term expires after the former.
Patent duration and maintenance fees
Maintenance fees vary in amount, increasing over time, and differ from State to State.
Furthermore, for various national patents, the time at which payment is required may also differ.
Maintenance costs for a patent (no longer to be understood as government concession taxes, which have been abolished, but as the payment of maintenance fees to keep the patent in force) must be paid regularly:
- if an invention patent has been obtained, on an annual basis, starting from the fifth year from the patent application (the first four years are included in the filing fee / encompassed in the costs of the application itself);
- if, instead, a utility model patent has been obtained, five years of fees must be paid simultaneously with the filing of the application, and the other five years must be paid after five years, so that a maximum of two payments are made in total.
In the case of an invention patent, each annuity must be paid in advance, starting from the fifth year, no later than the last day of the anniversary month of the application filing (if a patent was filed on July 10, 2012, the maintenance fees must be paid by July 31 of the years following the end of the fourth year, starting from July 31, 2016, and until July 31, 2031) or, by paying a surcharge as a late payment fee (€100.00), even within the last useful day of the following six-month period.
Maintenance fees for invention patents, utility models, and designs, where already due at the end of the month in which the grant certificate is issued or due by the end of the third following month, are payable within four months from the end of the month of said issuance (Art. 227 CPI, as amended by Legislative Decree 131/2010, paragraph 2). Once six months have passed, it is no longer possible to remedy the oversight, except in very rare and exceptional cases (reinstatement procedure).
Important to know:
If the annuity is not paid within the terms, the patent lapses and with it the owner's right to its exclusive use. In other words, the patent enters the public domain. Anyone may pay the due annuity. Multiple advance payments can be made, but only if they refer to the same patent.
European patent duration
Even though many months are required before the patent application is accepted (or perhaps rejected), during this period the invention can be implemented, sold, or licensed.
Furthermore, legal action can be taken against an infringer even on the basis of the public patent application alone, assisted by a lawyer expert in the field to avoid errors that could jeopardize the outcome.
In the case of a European patent application, if one wishes, for example, to initiate infringement proceedings in Italy, it will first be necessary to proceed with the publication at the UIBM (Ufficio Italiano Brevetti e Marchi, the Italian Patent and Trademark Office) of the Italian translation of the text of the claims which, otherwise, are not enforceable against third parties.
The European patent lasts 20 years starting from the filing date.
It is also important to note: after the European patent has been granted and nationalized, fees are no longer paid to the EPO, but to keep it in force, annual fees must be paid state by state in each nation where one has chosen to validate it.
Patent duration: renewing a design or model
In the case of designs and models, industrial property rights have a five-year duration. However, they can be renewed for another four five-year periods, so as to reach a total protection of 25 years. The only condition is that the relative renewal fees are regularly paid, no longer to be understood as government concession taxes, which have been abolished, but as the payment of maintenance fees to keep the patent in force.
Payments must be made in advance no later than the last day of the anniversary month of the application filing: thus, if a design or model was filed on July 10, 2012, the renewal fees for the subsequent five-year period must be paid by July 31, 2017, and then again, always by July 31, every 5 years. Should the expiry deadline pass, payment is permitted within the following six months, with the application of a late fee. After this period, it is possible to recover the lapsed right through the reinstatement procedure provided by Article 193 CPI or the continuation procedure provided by Art. 192 CPI.
If the payment is not made, the industrial property right on the design or model lapses and no longer has any value: it becomes unusable and impossible to defend.
Anyone can pay the extension fees to be paid to the Agenzia delle Entrate (the Italian Revenue Agency) exclusively through the use of the F24 form.
The receipt of payment for the maintenance fees must be kept in original.