Patent filing

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 (c.p.i.).

In particular, the invention must be:

To this end, and particularly as regards the requirements of novelty and inventive step, it is advisable — or at the very least strongly recommended — to conduct a prior art search.

The state of the art comprises everything that has been made publicly available (globally) through a written or oral description, an online publication, use or any other means, prior to the filing date. Therefore, to find out whether one's invention has already been patented, or before starting a research project, it is necessary to carry out a patentability search of the scientific literature, with particular attention to patent documents.

A patent search — conducted through specific databases (public and free-access or fee-based; national or international) — often makes it possible to obtain a sufficiently complete overview of an entire technological sector and, consequently, to understand the degree of freedom to operate for one's invention.

Once a prior art search has been carried out and it has been verified that the invention meets the patentability requirements, the application must be prepared for filing before the competent national or regional office.

The inventor who wishes to protect a technical innovation can follow different paths, depending on specific protection needs or a defined commercial strategy. A well-established approach is to start with a national filing — for example in the country of residence or where the legal entity that will own the patent has its registered office. This procedure entails very limited initial costs and a relatively simplified process.

For instance, no foreign-language translation of the patent document is required (except for the claims) and there is no need to instruct qualified foreign attorneys.

In any event, 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.

As a rule, at this stage it is advisable to rely on an intellectual property expert, a specialised consultant or a patent attorney, who will then represent the inventor's interests throughout the entire procedure.

In addition to the fundamental requirements set out above, the application must also meet the requirements of sufficient disclosure and unity of invention. These features are often not fully identifiable to the untrained eye and, if not complied with, may jeopardise the validity of the filing.

The application essentially comprises: title, abstract, description, claims and drawings (where present):

In Italy, patent filing can be carried out online (electronic filing) via the dedicated portal of the Italian Patent and Trademark Office (UIBM), by holders of a digital signature, through any Chamber of Commerce, or by sending the application directly to the UIBM in Rome (paper filing).

Both natural persons and legal entities may file patent applications.

The application for a patent (or utility model) must be drafted on the appropriate form and must relate to a single invention.

At the filing stage, information is required on the applicant, the owner of the invention, the inventor(s) and any representatives or attorneys. All the patent documents listed above must be attached to the application; upon filing, the receiving Office or authorised body assigns a sequential number to the application, which serves as its identifier.

By law, the application is subject to a confidentiality period of 18 months, the first 90 days of which — non-derogable — are reserved for the military authority, which has the right to check whether the invention is of interest. The holder may decide to make the application publicly available in advance, so that, once the 90 days have elapsed, it becomes accessible.

All rights arising from the patent filing that belong to the applicant are fully effective from the day of filing.

The applicant may file the application personally or through an intellectual property consultant enrolled in the relevant professional register. In the latter case, a proper letter of appointment must be attached.

For paper filings, fees vary depending on the number of pages of the text. For electronic filings, the fee is fixed (EUR 50), covering filing and the first three annuities (renewal fees). Subsequent annuities must be paid by the end of the month corresponding to the month in which the application was filed.

The UIBM first examines the application on formal grounds and then examines it against the substantive requirements set out above. Since 1 July 2008, every Italian application has been subject to a prior art search conducted by the European Patent Office (EPO), pursuant to an agreement with the UIBM.

The EPO search aims to determine whether prior documents (patents, publications, etc.) exist that could undermine the novelty or inventive step of the claimed invention.

Following the search, the EPO issues (within 6-9 months of filing) an Italian search report together with a preliminary opinion on patentability. If the search reveals substantive issues, the applicant may decide whether to file a reply with the UIBM (within 21 months of filing) or to withdraw the application.

The costs of the prior art search are borne by the UIBM, so no search fee is charged to the applicant. In the final stage of the procedure, an Italian examiner assesses the search report, the opinion on patentability and any response to objections; if the assessment is positive, the Italian patent is granted.

The purpose of the patent right is to allow the holder — by means of a twenty-year monopoly over the invention — to reap the benefits of the human and financial investment that led to the invention. Drafting the application and filing the patent are crucial stages of the procedure, and its outcome largely depends on them. For this reason, in order to handle the process safely and minimise the associated risks, it is strongly advisable to rely on a consultant specialised in industrial property.