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 procedures in any technical sector are patentable if they possess novelty, inventiveness and industrial applicability. Methods for surgical or therapeutic treatment, diagnostic methods applied to the human or animal body and new plant or animal varieties, as well as essentially biological procedures for the production of animals or plants, are not patentable. A specific Italian plant variety right is available for new plant varieties.
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 susceptible of industrial application. Such application may be in any field of industry, including the agricultural sector.
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 filing 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
After the application is published, usually after 18 months from the filing or priority date or earlier if the third party has been notified, 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.
The IPTO carries out an examination of formal patentability requirements. Applications filed as from 1 July 2008 also undergo a priority 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 the filing dateof the application. 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 confers upon the owner the right to request customs protection, involving the detention 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).