The Italian Patent and Trademark Office classifies the invention upon grant according to the International Patent Classification system and checks upon the fulfilment of formal requirements: the application’s title (which must correspond to the actual invention), the invention’s lawfulness according to the Italian Industrial Property Code and the fulfilment of the novelty, inventive step and non obviousness requirements.
As from 1 July 2008 prior art searches are carried out for first Italian patent applications, that is applications not claiming a priority right. Searches are performed by the European Patent Office pursuant to an agreement with the Italian Patent and Trademark Office. Search results are provided in the form of a “standard” Extended European Search Report and an opinion on patentability is also produced, but only in English, and is therefore officially issued merely for information purposes.
Where the Italian application becomes the basis for a European patent or International patent application (PCT) designating the European Patent Office as International Search Authority, the search fee will be reimbursed by the European Patent Office to the applicant directly (and therefore not to the Italian Patent and Trademark Office), if the substantial identity of claims is recognised between the Italian priority application – which has already undergone the search – and the European or International application. No search is performed for Italian utility model applications.
A European patent application, or an International patent application designating a European patent, is eligible for provisional protection (see Can the applicant enforce his rights before grant?) on condition that an Italian translation of the application is filed with the Italian Patent and Trademark Office.
The owner of an International patent application cannot designate Italy directly. Such designation is equivalent to the designation of a European patent with effect in Italy. If the International application designates the European patent, the owner must designate Italy when entering into the regional phase of the European patent.
According to the Italian Industrial Property Code, re-establishment of rights may be obtained if a request is filed no later than one year after the expiration of the unobserved time limit. The omitted act must be completed within two months of the removal of the cause of non-compliance with the time limit. Besides, Italian law provides that in order to obtain the re-establishment of rights, the right holder must have observed the “utmost diligence”. Re-establishment of rights has so far been rarely granted by the Italian Patent and Trademark Office, due to an extremely restrictive interpretation of this condition.
Italian law provides for injunctive relief which can be requested and applied expeditiously enabling patent holders to protect their rights against infringers. The right holder may request the judge to issue a stop order of the allegedly infringing activity, and to order the seizure of allegedly infringing items, even before the infringement case is heard in court.
The Italian Patent and Trademark Office does not provide for an opposition procedure for patents. Anyone wishing to challenge the validity of an Italian patent must ask the Court of law having jurisdiction on the patent to declare the patent null and void.
The application for an Italian patent entitles the applicant -even before grant- to prevent unauthorised third parties from using the invention, and bring court actions or request injunctive relief for that purpose. He may do so starting 18 months after filing or priority date (after this period the patent application is open for public inspection) or earlier if the patent application is notified to the infringer.
Italian patents for invention are currently granted about 2 to 3 years after filing date. Utility models are granted about 5 years after filing date.
Under Italian law, an invention is the solution of a technical problem which had not previously been solved or had been solved in an unsatisfactory way; a utility model confers a new shape to a product that was already known, making it more useful, effective or comfortable.
The law provides that, under certain conditions, a patent for invention may be converted into a utility model, or vice versa, in order to avoid a loss of rights where the wrong kind of protection has been applied for or granted.
Lastly, there is a difference in term between patents for invention (20 years) and utility models (10 years).
New models which improve the usability of machines, their components, utensils and implements in general can be protected with an Italian utility model.
Utility models must fulfil the same requirements concerning novelty and industrial application which apply for patents. An inventive step is also a requirement, though the qualitative level required differs from the one necessary for patents. Production processes, chemical inventions and electric/electronic circuits cannot be protected as utility models.
Italian law provides several tools for the enforcement of rights arising from utility models: the most frequently used is the action for infringement before the competent court. However there are also other, quicker but nonetheless effective enforcement means: