An Italian utility model 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.
Protectable Utility Models
New models which improve the usability of machines, their components, utensils and implements in general are protectable utility models.
Utility models must fulfill the same requirements of 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.
Absolute novelty is a requirement; any disclosure of the utility model before the application’s filing date or before the priority date can make the utility model null.
On filing date of the utility model 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 at least minimally inventive.
The utility model 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 one of the other member states of the Paris Convention or World Trade Organization within 12 months running from the date of that first application. More than one priority is permitted. A first application for an Italian utility model may be the basis for a priority claim when subsequent applications are filed for the same model in other states party to the Paris Convention or World Trade Organization.
Who may Apply for an Italian Utility Model
Any natural or legal person of Italian or foreign nationality may apply for an Italian utility model.
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
Utility model 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, or earlier, providing the third party has been notified.
The IPTO carries out only an examination of the formal requirements of patentability. It does not examine the novelty of the applicant’s invention, but it can refuse to grant the patent if the proposed invention appears clearly obvious.
No opposition procedure exists.
Patents for utility models are granted roughly 5 years after filing date. However, exclusive rights can be exercised also pending the grant (see Rights Conferred by the Application).
Utility models have a duration of 10 years following filing date.
In addition to the filing fee, at the end of the first 5 years, a maintenance fee must be paid for the next 5-year period.
Use Requirements and Compulsory Licensing
Italian utility models are subject to use requirements and compulsory licensing: if a utility model 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 model. It is not necessary to file proof of working at the IPTO. The utility model 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 utility models is allowed. Utility models may also be used as rights of security.
Conversion of a Utility Model into an Invention Patent and Vice Versa
Conversion of a utility model into an invention patent and vice versa may be requested if the protected subject matter proves to be more suitable for an invention patent (or vice versa, for a utility model).
Conversion of a European Patent into an Italian Utility Model
Conversion of a European patent into an Italian utility model is possible, under certain conditions, when a European patent has been revoked, or when a European patent application has been rejected or withdrawn.
A granted utility model or a utility model 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 and the World Trade Organization TRIPs Agreement (World Trade Organization members).