Patent registration in Italy

Patent registration is increasing significantly in areas that are advantageous in Italy.  This country has strengths in the manufacturing of industrial machinery, automation equipment, and precision mechanical components, so inovation in this field can be related to improving production processes, improving machine performance, and developing new technologies. Italy is also one of the world’s leading food hubs, with famous products such as wine, cheese, and pasta. This also promotes mechanical inventions to increase the number of products but still maintain the original quality. These inventions may focus on improving product formulations, developing new processing processes, or creating new products. In the context of global warming, Italy is also one of the countries promoting the development of renewable energy and green technology solutions to protect the environment, so Italy focuses on developing new energy sources, improving energy efficiency, or reducing environmental impacts. However, many people still do not know the procedure for registering a patent in Italy, Viet An Law would like to guide customers through the article below.

Legal Basis

• Industrial Property Code (Legislative Decree No. 30 of February 10, 2005, amended and supplemented to Law No. 102 of July 24, 2023)

Definition of Invention in Italy

A patent is a type of certificate under which the owner is granted a temporary exclusive right to exploit an invention for a limited period of time, including the right to execute, use, and commercialize it exclusively, and prohibit similar activities by other subjects. The patent does not give the owner the freedom to use the invention protected by the patent, but only has the right to prevent other objects from using it.

Types of patents that can be registered in Italy

• Invention patents: Protection of new products, new processes, or new methods.
• Design Patent: Protect the external appearance of the product.

Conditions for registering a patent in Italy

• Novelty: The invention must be new, which means that it has not been published or disclosed to the public anywhere in the world prior to the date of filing the patent application i.e. the invention has not been disclosed in any form of information such as publication, presentation or commercial use.
• Invention step: The invention must not be obvious to a person with expertise in the relevant technical field. This means that the invention must have a leap in creativity that is not easily recognized by a person with knowledge in this field.
• Industrial applicability: The invention must be able to be created or used in any type of industry. This means that the invention must have a practical application and not just be theoretical or abstract.

Patent search in Italy

Italian Patent and Trademark Office (UIBM)

Ufficio Italiano Brevetti e Marchi (UIBM) is the official online platform for searching for patents and other intellectual property rights in Italy, offering both basic and advanced search options.

• Basic Search: Allows the applicant to search by a single criteria, such as patent number, applicant name, or keyword.
• Advanced Search: Provides more flexibility, allowing single owners to combine multiple search criteria and filter results by date, technology classification, and other parameters.

Customers can access the link here: https://uibm.mise.gov.it/index.php/en/ricerca?searchword=&searchphrase=all

Espacenet

Espacenet is a free online service offered by the European Patent Office (EPO) that allows applicants to search for patents and patent applications from all over the world, including Italy. The system provides a comprehensive database and various search options, including search by keyword, search by classification, and search by applicant/inventor.

Customers can access Espacenet here: https://worldwide.espacenet.com/

Google Patents

Google Patents is another free online patent search engine that provides access to a vast database of patents from many countries, including Italy. The search interface is simple and allows the applicant to search by keyword, patent number, inventor, or assignee.

Customers can access Google Patents here: https://patents.google.com/

Patent Representation

If the applicant needs assistance with a complex patent search or requires in-depth advice, the applicant can contact the patent representative registered in Italy. They have expertise in patent search and can help the applicant identify relevant patents and evaluate the impact of those patents on the applicant’s patent.

Patent registration dossier in Italy

• Patent Application: This form includes information such as the name of the invention, the name and address of the inventor(s) and the applicant(s), and the filing date.
• Description: This is a detailed description of the applicant’s invention, including the context, the technical field, the problems it solves, and how it works. The applicant must provide sufficient detail so that a person with expertise in the field can understand and reconstruct the invention. The information typically includes the following sections:
  • Name of the invention
  • Technical Field
  • Background art
  • Patent Summary
  • Brief description of the drawings (if applicable)
  • Detailed description of the invention
  • Industrial applicability
• Protection Claims: This is a numbered list of claims to determine the scope of protection for one’s invention. Claims for protection are the most important part of a patent application, as they define the scope of the applicant’s exclusive rights.
• Drawings (if any): If the applicant’s invention can be illustrated, drawings should be provided to help clarify the description.
• Summary: A brief summary of the invention, usually about 150 words or less.
• Priority documents (if any): If the applicant has applied for a patent for the same invention in another country within the last 12 months, the applicant can claim priority.
• Power of attorney (if any): If the applicant files through the patent representative, it is necessary to provide them with a power of attorney on behalf of the applicant.
• Other documents (if applicable): Depending on the applicant’s case, the applicant may need to file other documents, such as a transfer agreement if the applicant is not the inventor, or a copyright statement.

Fees for registering a patent in Italy

Patents for Inventions

• The online application fee is EUR 50.00.
• For the submission of hard copy applications, the application fee ranges from EUR 120.00 to EUR 600.00 depending on the number of pages in the application.
• An additional fee of EUR 45.00 is required for any profile component that exceeds 10 pages.

Patents for industrial designs

• The online application fee is EUR 50.00.
• The hard copy filing fee is EUR 120.00 regardless of the number of pages and the number of requests.

When filing a paper application, in addition to the above fees, the applicant must pay an additional administrative fee of EUR 40.00 to the Chamber of Commerce.

Maintenance fees are charged from the fifth year after the date of application:

• For patents for inventions, the annual fee payable increases from EUR 60.00 up to EUR 650.00 (in the 20th year);
• For industrial design patents, the fee payable for the second 5-year period is EUR 500.00.

Patent registration in Italy through the PCT system

What is the PCT System?

The PCT system stands for  Patent  Cooperation Treaty – an international treaty that aims to create a uniform process for filing international patent applications. The system is administered by  the World Intellectual Property Organization (WIPO) and has more than 150 countries participating, including Italy.

Benefits of the PCT system:

• Save time and money: The PCT system allows the applicant to file a single patent application for patent protection in multiple countries participating in the Treaty, rather than having to file a separate application in each country. This saves time, costs and administrative procedures.
• Postponement of the national filing deadline: When filing a PCT application, the applicant has an additional 30 months to decide which country the applicant wants to protect the invention. This is a valuable time for the applicant to evaluate the commercial potential of the patent and prepare for the filing of the national application.
• Simple Process: The PCT System uses a common set of rules and procedures for all participating countries, which simplifies the filing process and saves time for both the applicant and the national patent office.
• Early Search Information: The International Search Report and Written Opinion of the International Patent Search Agency will provide the applicant with information about the novelty and patentability of the patent, helping the applicant to make an informed decision about filing a national application.
• Enhanced international cooperation: The PCT system encourages international cooperation in the field of patents by creating a common platform for the exchange of information and the sharing of experiences between countries.
• Support innovation: The PCT system helps promote innovation by reducing the procedural burden on inventors and making it easier for them to protect their patents worldwide.

Patent registration dossier through the PCT system

To file an invention registration through the PCT system, you need to prepare a set of documents including the following documents:

• PCT Application: The application can be filed in Vietnamese or English, however, it is recommended that it be filed in English to facilitate the processing. You can download the PCT application form from the WIPO website: https://www.wipo.int/pct/en/forms/
• Description of the invention: The description of the invention should present the invention in detail and clearly, including:
  • Patent Name Technical Field
  • Patent Summary
  • Detailed explanation of the invention
  • Drawings (if any)
  • Request for protection
• Claim for protection: The claim for protection should clearly define the scope of protection that the applicant wants to give the invention.
• Patent Claims: Patent claims need to clearly identify the inventor (or inventors).
• Letter of Authorization (if applicable): If the applicant uses an intellectual property representative to file the application, the applicant needs to provide a Letter of Authorization that authorizes the representative to represent the applicant during the filing process and process the procedure.

Additional documents (may be required):

• Priority documents (if any): If the applicant filed an application for the same patent in another country before filing the PCT application, the applicant may claim priority based on the date of filing that application.
• Translation (if applicable): If any of the documents on file are not in English or French, the applicant needs to provide a translation into either of these languages.
• Application fee: The applicant needs to pay the PCT filing fee to the International Receiving Office (IB).

Patent registration services by Viet An Law Firm

• Perform the search and notify customers in writing of the results of patent search;
• Drafting dossiers and directly filing and monitoring the status of patent application, trademark registration, industrtial design registration on behalf of the owner;
• Notifying, advising and handling shortcomings/rejections of competent State agencies (if any) in the process of monitoring patent applications in Italy;
• Assist in monitoring and representing the resolution of objections and feedback to the intellectual property representative carrying out procedures in Italy.
• Receive official dispatches, certificates and hand over to customers (if any).

If you want to file an application for patent registration, please contact Viet An Law – IP Firm for the most effective support.