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COUNTRY : ITALIAN REPUBLIC
CAPITAL : ROME
LANGUAGE : ITALIAN
Applications can be filed with the Italian Patent and Trademarks Office administered by the Directorate General of Combating Counterfeiting, Ministry of Economic Development.
Protection to Inventions is provided at a two tier level in Italy:
1. THROUGH NATIONAL REGISTRATION. Direct Filing with the National Patent & Trademark office
2. THROUGH EUROPEAN PATENT CONVENTION.
Kindly refer our guide on European Patent Convention procedures
INTERNATIONAL TREATIES TO WHICH ITALY IS SIGNATORY
- Paris Convention for the protection of Industrial Property
- Patent Co-operation Treaty PCT.
- Agreement on Trade Related Aspects of Intellectual Property Rights TRIPS.
- Budapest Treaty On The International Recognition of the Deposit of Micro Organisms For The Purposes of Patent Procedure.
- European Patent Convention.
PATENT LEGISLATION IN ITALY:
The Italian legal system follows the Civil Law model and is based on Roman law and on French Napoleonic Law.
Patents in Italy are governed by: Royal Decree No: 1127 of June 1939 as amended by legislative decree no: 198 of March 19 1996.
Patents are granted by the Italian Patent Office.
BASICS REGARDING PATENTABILITY OF INVENTIONS IN ITALY:
Inventions may relate to products, processes or industrial applications. Patents are therefore granted to inventions that:
- Are New or Novel
- Involve an inventive step
- Comprise of a process or an Industrial application of the invention.For an Invention to be patentable, it should contain the following:
(i). Novelty: An invention is considered new or novel if it is not included in the state of the art. State of the art consists of all the information available and accessible to the public prior to the date of filing for the patent application nationally or internationally by means of its description, use or any other method by which it may be known or utilised by experts in the field.
(ii). Inventive Step: is, given the prevailing state of the art, it is not obvious to an expert in that field. An invention is considered “obvious” when it is within the grasp of a skilled person in that field of expertise & therefore to be expected from him.
(iii). Industrial Application: of the invention would be “when the object of the invention may be produced, manufactured or used in any kind of industry including agriculture”
INVENTIONS NOT PATENTABLE IN ITALY:
Inventions pertaining to the following:
- Discoveries, Scientific Theories & Mathematical methods.
- Aesthetic creations.
- Substances already existing in nature and nuclear materials.
- Schemes, Rules, Methods for performing mental acts, playing games, doing business as well as Presentation of Information.
- Programmes for Computers.
- Inventions contrary to public order & morals.
- Methods of treatment by surgery or therapy on humans and animals.
- Prejudicial to the Interests or Security of the Nation.
ParityPatents Law Firms through its associates in Italy is at hand to help you with patent registration and prosecution.
FILING REQUIREMENTS OF PATENTS IN ITALY:
- A formal request for the grant of a patent of invention .
- The name and address or head office of the applicant or his representative .
- Short adequate Title of the Invention to be patented.
- Summary of the invention and Priority data if any.
- Description of the invention along with drawings if any.
- Claims along with Abstract
- Drawings necessary to understand the invention.
EXAMINATION OF THE PATENT APPLICATION IN ITALY:
- Once the patent application is filed, the application is scrutinised for defence & security aspects.
- Upon receipt of the patent application, it is subjected to preliminary examination to ensure compliance with all the necessary requisites.
- Any short comings to be addressed by the applicant within stipulated period of time else, patent application deemed abandoned.
- Patent application is subjected to substantive examination to ensure application meets all requisites of patentability.
- The patent application is published.
- Decision regarding patentability is taken by the authorities.
Post Patent grant by the European Patent Office (EPO), Patent needs to be validated in the member country as designated on the Patent application.
Patent Validation comprises of certain formalities and requirements per national laws of the designated country.
Parity Patent Attorneys and Associate Law Firms in Italy are at hand to help and assist you with Patent Validation.
RIGHTS OF THE PATENTEE IN ITALY:
- Patents with a term of 20 yrs.
- Utility Models with a term of 10 yrs.
Patents confer on its holders and successors an exclusive right to work the invention.
- Patentee may authorise such uses of the patent through a contractual agreement with interested parties as to import, rent out, deliver or sell the product patent .
- Patentee may authorise the working of the patent either by a manufacturer or by an importer.
- Patentee may even assign, lease or licence the patent.
- Patentee is entitled to take legal action against infringers.
- Patentee is entitled to retain moral right over the invention as “the author of the invention.
- The patent can be pledged for which it has to be registered in the patent register to become effective.
COMPULSORY LICENCES OF PATENTS IN ITALY:
The exclusive rights of the patentee over the patent are subject to certain limitations which are known as compulsory licenses. These are authorisations given by governmental authorities, independently of the will of the owners.
It is pertinent to bear in mind that the patent shall lapse if the invention is not worked within two years from the grant of the first compulsory license or has been worked to an extent seriously disproportionate to the needs of the country.
Compulsory licenses are granted on the following grounds: Where, after three years have elapsed from the date of grant of a patent, or four years from the filing date of the application:
- the owner of the patent or his successor in title has not worked the patented invention, either directly or through one or more licensees, by producing in the territory of the State
- imported goods produced in a Member State of the European Union or of the World Trade Organization
- has worked the said invention to an extent that is seriously disproportionate to the needs of the country
- where the working of the invention has for more than three years been suspended or so reduced that it is seriously disproportionate to the needs of the country
- where the patented invention cannot be worked without pre judicing the rights in a patent granted on an earlier application.
- the license so obtained shall be non-assignable unless the patent relating to the subsequent invention is assigned with it.
- The owner of the patent relating to the first invention shall be entitled, in his turn, to a compulsory license on reasonable terms for the use of the patent relating to the subsequent invention.
- Any person who applies for a compulsory license under the foregoing paragraphs shall prove that he has first approached the owner of the patent and failed to obtain a contractual license from him on reasonable terms and conditions.
- These provisions of this Article shall not apply to patented inventions belonging to the Military Administration or to those kept secret.
- A compulsory license may be granted where the working of an invention is intended mainly to supply the domestic market.
- A compulsory license shall not be granted if the failure to work the patented invention, or to work it adequately, is due to causes beyond the control of the proprietor of the patent or his successor in title.
- Such causes shall not include the lack of financial means, and, if the product is widely circulated in foreign countries, the lack of demand on the domestic market for the patented product, or the product obtained by the patented process.
- A compulsory license may be granted only against payment of fair compensation by the licensee to the proprietor of the patent or his successor in title, and on condition that the person applying for the license gives the necessary guarantees that the invention shall be worked satisfactorily in accordance with the terms laid down in the license.
- A compulsory license may not be granted to a counterfeiter of an invention. Compulsory licenses may be granted for a period not exceeding the remaining duration of the patent, and, except with the consent of the proprietor of the patent or his successor in title, may be transferred only together with the licensee’s business, or with the particular branch of the business in which the license is used.
- The grant of a compulsory license shall not prevent the institution of legal proceedings concerning the validity of the patent or the rights deriving therefrom, including actions instituted by the licensee.
- The grant of a compulsory license shall not exempt the proprietor of the patent or his successor in title from the obligation to work the invention.
ParityPatents along with specialised Patent Lawyers and Patent Attorneys in Italy, can assist you comprehensively with Compulsory Licence matters.