The Ufficio Italiano Brevetti e Marchi (UIBM – Italian Patent and Trademark Office) is an office of the Ministry of Economic Development of the Italian Government, which primarily deals with the administrative activity of registration and the granting of industrial property rights obtainable through patenting and registration.
With more than 130 years of history, the Ufficio Italiano Brevetti e Marchi has been and continues to be a witness to inventions, trademarks, Italian design, ingenuity, creativity, industry, and development known throughout the world.
Founded in 1884, it is now headquartered in Rome and performs the important function of administering and granting intellectual property rights.
Specifically:
Activities of the Ufficio Italiano Brevetti e Marchi
At the national level:
- receiving applications for the granting of industrial property titles;
- verifying the technical and formal regularity of grant applications;
- examining, granting, or rejecting applications.
At the international level:
- receiving applications for the granting of industrial property titles (patents and European patents, national or Community trademarks).
In practice, this office is responsible for receiving applications, examining them and, in the event of a positive outcome, archiving all trademarks and patents registered on Italian territory.
If you wish to register a national trademark, patent, or design in Italy, the application will indeed be sent to the UIBM. The office will then analyze whether this application meets all the necessary requirements for registration approval and will archive the file in a dedicated database.
UIBM data can be consulted both physically, at the "Sala Pubblico UIBM" (UIBM Public Room) at the Rome headquarters, and through the periodically updated website, which allows for searches by date, number, and patent type.
Ufficio Italiano Brevetti e Marchi: the registration process
To submit your registration application and start the registration process, it is not necessary to go to Rome in person to file all the required documents.
Once the file has been correctly completed, it is possible to:
- Contact the Chamber of Commerce in your city (or the one with the nearest branch) with the completed application. The Chamber of Commerce itself will handle sending the file to the UIBM.
- Submit the application electronically through the UIBM website.
In both cases, these offices deal with receiving the application and not with strategic consultancy (for example, to verify whether similar trademarks or patents already exist, the so-called "prior art search") or the correct formulation of the application (protecting the key points of a patent, for instance, to make it unassailable).
Therefore, the advice is always to entrust the registration process to professionals in order to avoid risks and disadvantages.
Ufficio Italiano Brevetti e Marchi: appeals
Pursuant to Art. 135 of the Codice della Proprietà Industriale (CPI – Industrial Property Code), "It is possible to appeal against decisions of the 'Ufficio Italiano Brevetti e Marchi' that reject a patent or trademark registration application in whole or in part." The jurisdictional body is therefore the "Commissione dei Ricorsi" (Board of Appeals).
The Commissione dei Ricorsi is a special jurisdictional body, whose members are chosen from among magistrates with a rank not lower than that of court of appeal counselor or from among professors of legal subjects at state universities or higher institutes and are appointed by decree of the Minister of Economic Development.
Technical experts may also be added to the Commission to report on individual issues, should the Commission need to decide on appeals requiring special technical knowledge. The Commission must hear the interested parties (the applicant for a certain measure or their representative and the Ufficio Italiano Brevetti e Marchi), potentially the technical experts chosen by the President, and must take into account their written observations; it may also order any investigative measures it deems appropriate.
The Commission's decisions take the form of orders, decrees, or judgments; the judgments are final and may be directly appealed before the Corte di Cassazione (Court of Cassation).
How to file an appeal?
The appeal, drafted on plain paper, must be reasoned and addressed to the "Commissione dei Ricorsi contro i provvedimenti dell'Ufficio Italiano Brevetti e Marchi", via Molise, 19 – 00187 Rome; it must also be served by a judicial officer (pursuant to Art. 136 of the CPI), both to the UIBM and to any interested counter-parties referred to in the measure subject to appeal (if any), within a period of 60 days, starting from the day on which the interested party received communication of it or became aware of it.
For acts for which individual communication is not required, the 60-day period for serving the appeal starts from the day on which the period for their publication expired, if such publication is provided for by law or regulation.
The appeal, with proof of service and prior payment of the prescribed fees, must be filed at a Chamber of Commerce within 30 days of the last notification. If necessary, it is possible to send the appeal, by registered mail, directly to the Commissione dei Ricorsi – Ufficio Italiano Brevetti e Marchi – via Molise, 19 – 00187 Rome, again within 30 days of the last notification made, attaching a copy of the contested measure (if in the appellant's possession), the requested documentation, and all documents the appellant intends to rely on in court. In this case, the Secretariat of said Commission will handle forwarding it to the Rome Chamber of Commerce for the formal recording of the appeal filing, with the date corresponding to that of receipt by said Secretariat.
Three copies of the appeal and any attachments must be submitted along with the original (subject to the Power of the President of the Commission to request a greater number of copies).
The appeal must also be accompanied by proof of payment of 518.00 euros (to which 8.85 euros must be added if an authentic copy of the judgment is desired) made to current account no. 871012, held by the Tesoreria Provinciale dello Stato – Roma (Provincial State Treasury – Rome), in favor of chapter 3602 – head X, or the receipt issued by the competent Provincial Treasury if payment of the aforementioned sum occurs directly at the same. If the appeal is sent by mail and a copy of the filing report is requested, the following must also be attached:
- a 16.00 euro revenue stamp (marca da bollo)
- proof of payment of "Secretariat Fees" made with form Ch.8 quater to postal current account no. 33692005 held by "Camera di Commercio – Roma".
The appellant may also reserve the right to submit one or more additional briefs in support of the appeal. These briefs (one original plus three copies, together with a copy of the contested measure) must reach the Commission Secretariat no later than seven days before the date set for the discussion of the appeal, unless otherwise indicated.
For its part, within thirty days of the deadline for filing the appeal, the UIBM must deposit its file with the Secretariat, containing the contested measure, the acts, and the documents based on which the rejection measure was issued, those cited therein, and those it deems useful for the judgment.
Ufficio Italiano Brevetti e Marchi: the fight against counterfeiting
Operational since January 1, 2009, by effect of Presidential Decree no. 197 of November 28, 2008, the Direzione Generale per la Lotta alla Contraffazione – Ufficio Italiano Brevetti e Marchi (DGLC-UIBM – Directorate General for the Fight against Counterfeiting) exists within the UIBM.
The Directorate General received new impetus from the "Development Law" (Law July 23, 2009, no. 99), aimed at investing in the relaunch of Italy, which contains measures to guarantee "more protection for Industrial Property and Made in Italy through the strengthening of the fight against counterfeiting." it operates nationally and internationally to strengthen the fight against counterfeiting and spread awareness of intellectual and industrial property rights.
The fight against counterfeiting is strengthened through:
- the definition and implementation of policies and strategies for the fight against counterfeiting;
- awareness-raising and information actions for citizens and businesses;
- assistance and support activities for citizens and businesses;
- the implementation and management of databases on the phenomenon of counterfeiting;
- liaison and coordination with competent authorities, including those abroad.
Greater knowledge regarding the use of Industrial Property rights is transmitted through:
- the definition and implementation of policies and strategies for the promotion of Industrial Property;
- actions for the protection and enhancement of Industrial Property titles (trademarks, patents, designs, and models) at national, European, and international levels;
- the management of databases and the dissemination of patent information;
- liaison and coordination with national and international bodies competent in the field.