An Italian patent grants protection in the entire Italian territory (for a total of roughly 324,000 square kilometers and about 60 million inhabitants) and in the State of San Marino and may be recognized in the Vatican City.
All new products or processes in any field of technology are patentable inventions, with the exclusion of therapeutic methods for the treatment of humans or animals, new animal and plant varieties or essentially biological methods for the production of plants or animals. The invention must be new, involve an inventive step and have an industrial application.
Absolute novelty is a requirement; any disclosure of the invention before the filing date of the patent application or before the priority date can make the patent null.
On the filing date of the patent application, the invention must include what is known as an inventive step: a step that an expert in the relative field, knowledgeable of the state of the art in that field, would recognize as non-obvious.
The invention must have an industrial application. Such application may be in any field of industry including services and agriculture.
It is possible to claim the priority of the first, prior patent application filed in Italy or in one of the other member states of the Paris Convention within 12 months running from the date of that first application. More than one priority is permitted. A first application for an Italian patent may be the basis for a priority claim when subsequent applications are filed for the same invention in other states party to the Paris Convention.
Who may Apply for an Italian Patent
Any natural or legal person of Italian or foreign nationality may apply for an Italian patent.
Applicants may only be represented professionally by qualified patent attorneys holding membership in the Italian Industrial Property Consultants Institute, or by attorneys-at-law.
Where to File the Application
Patent applications may be filed in Italy, at the Provincial Offices of the Ministry of Industry or at the Italian Patent and Trademark Office (IPTO).
Rights Conferred by the Application
The applicant has the right to prevent any third party from using the invention, and bring court actions or request interlocutory injunctions to that end. He may do so starting 18 months after filing or priority date (term during which the patent application is open to public inspection), or earlier, providing the third party has been notified.
The IPTO carries out an examination of formal patentability requirements. Applications filed as from 1 July 2008 also undergo a novelty search, which is carried out by the European Patent Office on behalf of the IPTO, and is made available to the applicant.
No opposition procedure exists.
Patents are granted roughly 3 years after filing date. However, exclusive rights can be exercised pending the grant of the patent (see Rights Conferred by the Application).
Patents have a duration of 20 years following filing date.
In addition to the filing fee, annual maintenance fees are required and are payable in advance as from the 5th year.
Extension of Patent Duration
An extension of patent duration may be obtained for pharmaceutical patents and for patents covering plant protection products, under certain conditions, by requesting a Supplementary Protection Certificate.
Use Requirements and Compulsory Licensing
Italian patents are subject to use requirements and compulsory licensing: if a patent is not worked or is worked insufficiently in production in Italy or importation from European Union or World Trade Organization member states, third parties may request a non exclusive compulsory license on the patent. It is not necessary to file proof of working at the IPTO. The patent expires if it is not used within 2 years of the grant of the compulsory license. The compulsory license may be revoked if the circumstances which gave rise to it cease to exist and are unlikely to recur.
Licensing, Assignment, Rights of Security
Licensing and assignment of Italian patents is allowed. Italian patents can also be the object of rights of security.
A granted patent or a patent application give the owner the right to request customs protection, involving the seizure of counterfeit products at customs.
Applicable International Agreements
The Paris Convention, the European Patent Convention, the Patent Cooperation Treaty (PCT) and the TRIPs Agreement (World Trade Organization members).