Patent filing is a crucial stage of the patent procedure, and the outcome largely depends on it. Let us therefore see how it should be carried out.
The patent procedure comprises several phases and steps aimed at obtaining legal protection for a finding or invention. This procedure, which concludes only upon grant of the patent, can take several years, and the costs involved may be significant.
Patent filing: analysis of the invention and patentability requirements
The first phase consists of analysing the invention, its scope and its field of application, in order to verify that the invention to be protected meets the so-called patentability requirements set out in the Italian Industrial Property Code (IPC).
In particular, the invention must be:
- new, i.e. not yet included in the state of the art;
- involve an inventive step, i.e. not anticipated by or obvious in light of the prior art;
- capable of industrial application (susceptible of being manufactured or used in an industrial context); and lawful, i.e. not contrary to public order or morality.
The state of the art comprises everything that has been made publicly available (worldwide) through a written or oral description, an online publication, use or any other means, prior to the filing date. Through a patent search on the specific databases, a sufficiently comprehensive view of an entire technological sector can be obtained, and the level of freedom to operate for one's invention – the so-called "Freedom to Operate" – can be assessed.
Patent filing: preparing and registering the application
Once a prior art search has been carried out, the application must be prepared for filing before the competent national or regional office. A well-established strategy is to start with a national patent filing. This procedure entails limited initial costs and a relatively simplified process.
The applicant has 12 months from the patent filing date (priority date) to extend the application to other countries, claiming priority from the first filing.
Requirements of the application
The application must also comply with the requirements of sufficient disclosure and unity of invention:
- Sufficient disclosure: the invention must be described in a sufficiently clear and complete manner, so that a person skilled in the art has all the elements to carry it out. Failure to comply with this requirement may lead to the patent being declared invalid.
- Unity of invention: as regulated by Article 161 IPC, the application must relate to one invention only.
Drafting the patent document
The application essentially consists of: title, abstract, description, claims and drawings (where present).
Title: identifies the technical field of application of the invention; it must be concise, clear and explanatory.
Abstract: provides a brief (about 150 words) technical indication of the subject-matter of the invention.
Description: the description explains the invention in detail; it must be sufficiently clear and complete so that a person skilled in the art can carry it out.
Claims: the claims must define the subject-matter for which protection is sought, in terms of technical features. They are the core of the document; they define the invention and the scope of patent protection.
Drawings (where relevant): figures, schemes or diagrams representing preferred embodiments of the invention.
Patent filing in Italy
In Italy, patent filing can be done online (electronic form) via the dedicated portal of the Italian Patent and Trademark Office (UIBM), through any Chamber of Commerce, or sent directly to the Office in Rome (paper form).
The application is subject by law to a secrecy period of 18 months, the first 90 days of which – non-derogable – are reserved for the military authority. Under electronic filing, the fee is fixed (EUR 50), including the filing and the first three annuities.
Steps following patent filing
The UIBM conducts an examination of the application, first from a formal point of view and then also on the substantive requirements. Since 1 July 2008, in Italy every application is subject to a prior art search carried out by the European Patent Office (EPO).
The EPO search aims to determine whether there are prior documents (patents, publications, etc.) that could impair the novelty and inventive step of the claimed invention. Following the search, the EPO issues (6–9 months from filing) an Italian search report together with a preliminary opinion on patentability.
During the last stage of the procedure, an Italian examiner will assess the search report and the patentability opinion, and if the assessment is positive, will grant the Italian patent.