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Patent in Italy

Definition

An invention is when a new and original solution is found to a technical problem, in practice an invention is an intuitive combination which until then had been lacking, of pre-existing concepts, ideas or features. The concept of industrial invention is founded on the solution of a technical problem which has not yet been solved; the solution must be able to have concrete applications in the industrial field such as to bring progress with respect to existing techniques and knowledge and to express a creative activity, not banal, on the part of the inventor. It must not be a simple association or application of already known ideas, applied in the same field, or in similar fields to solve the same problem, which come within the normal knowledge of persons of skill in the art.

Rights

The rights conferred by a patent for industrial inventions are territorially defined and consist of the exclusive right to work the invention and earn profit therefrom in the territory of the Italian State, within the limits of and on the conditions imposed by the law. This exclusive right is extended to the sale of the product to which the invention refers, but expires once the product is put on sale by the proprietor of the patent or with his consent, inside a member State of the European Union or the European Economic Area. If the original product is put on sale outside the European Economic Area and is then imported into it, the owner of the right can oppose this because, in this case, the right has not expired inside the European Economic Area.

When a product is manufactured using a method patented in a country where the patent title does not exist, if that product is introduced into a country where a method patent does exist, said product can be used in said country only by the owner or his successor in title of the method patent. If third parties use the product for profit in countries where the patent is protected, the owner or successor in title of the method patent can prevent such use.

The patent right does not extend, whatever the object of the invention:

  1. to any actions performed on private premises provided they have no commercial purpose, or attaining to experimentation;
  2. to the extempore preparation, in units, of medicine in chemist’s shops according to a prescription, and to the medicine thus prepared.
  3. if a patent, in order to be executed, implies the use of inventions protected by other patent titles still in force, it cannot be executed or used without the consent of the owner or his successor in title of the previous patent title. In the same way, the owner or his successor in title of the previous patent title cannot use the subsequent patent title without the consent of the owner of the latter.

Every patent application, and consequently every patent, must have as its object only one invention, or a group of inventions connected to each other so as to form a single inventive teaching. The patent confers the following exclusive rights on the holder:

  1. if the subject of the invention is a product the right to forbid third parties, except with the agreement of the patent holder, from producing, using, trading in, selling or importing for such purposes the product in question into those countries where the patent is in force;
  2. if the object of the patent is a method, the right to forbid third parties, except with the agreement of the patent holder, from applying the method, or using, trading in, selling or importing for such purposes the product which is directly obtained by the method in question in those countries where the method patent is in force;

In the case of a method patent, any product which is identical to the one produced by means of the patented method is presumed to have been obtained, unless proof to the contrary is provided by the third party, by means of the said patented method, according to one of the following cases:

  1. if the product obtained by the method is new;
  2. if there is a substantial probability that the identical product was made by means of the patented method and if the holder of the said patent is not able, by means of reasonable efforts, to determine the method actually followed.

In the effort to show proof to the contrary, the legitimate interest of those accused of infringement in protecting their manufacturing and commercial secrets must be respected. In other words, it must be avoided that the improper use of a method patent allows the owner, or his successor in title, to come into possession of the secrets of a competitor.

In Italy a patent for industrial inventions lasts 20 years from its filing date and is subject to the payment of annual maintenance fees, starting from the fifth year. If the deadline for payment of the annual fees is allowed to expire, a period of six months grace is given, during which it is possible to pay the annual fee due subject to a surtax.

The exclusive rights of a patent are conferred with the concession of the patent certificate. The effects of the patent come into force on the date on which the description and drawings attached to the patent application are made available to the public, or, from the moment when the content of the patent application is notified to a third party infringer. It should be clarified that the notification must include the whole content of the patent application, not only part of it.

Unless there is a specific request for advance publication, which must be presented with the patent application, the application is in any event available 18 months after the filing date. If the application has been filed first in a foreign country and then extended to Italy under international priority, namely within the convention period of 12 months from the first filing date, the application is made available upon expiry of 18 months from the first filing date.

Italian Patent Law includes the concept of prior use. This concept indicates that anyone who, during the twelve months before the date of filing of a patent application, or before the priority date, has made use in his own Company of an invention which then becomes the subject of a patent application by another party, may continue to use such invention within the limits of such prior use.

Use in one's own Company should not be intended to mean experimentation, nor any design activity, but the real and effective use of the invention for the purposes of profit. If pre-use is invoked, it must be remembered that the filing of the subsequent patent application by the third party freezes the extension of the pre-use on the date of said filing. Any further extension is subject to the right of the patent and must be authorized by the owner of said right or by his successor in title. This entitlement may be transferred only together with the Company, or branch of the Company, in which the invention has been used. The person claiming prior use is responsible for proving such prior use and its extent.

Types of rights

The rights arising from an invention are rights of a personal nature (the moral right of the inventor, a personal and inalienable right) and of a patrimonial nature (rights which are disposable or transferable). Patrimonial rights arising from inventions can be ceded either by deeds drawn up by living persons or through death; they are also subject to forfeit, confiscation and expropriation (for debts, or in the public interest). The right to the patent belongs to the author of the invention and to his successors in title.

Requirements of patentability

In order to be patented, an invention:

  • must be lawful;
  • must be suitable for application in the industrial field;
  • must be new;
  • must not be obvious, that is, it must not be a natural evolution of the state of the art.

Lawful means that inventions which, if worked, would be against public order or morality, cannot be the object of a patent. However, the working of an invention is not considered against public order or morality simply because it is forbidden by a law or administrative regulation. Public order means the protection of public interests such as safety, security, physical integrity, tranquillity and health. Morality covers the principles of moral ethics. Breeds of animal, and the essentially biological procedures followed in order to obtain them, cannot be patented either. However it should be noted that it is possible to patent microbiological procedures and also the products obtained by such procedures.

An invention is considered able to have an industrial application when the object thereof can be manufactured or used in any type of industry, including agriculture.

An invention is considered new if it is not included in the state of the art. State of the art means everything which has been made available to the public in the territory of the State or abroad, before the filing date of the patent application, by means of a written or oral description, by use, or by any other means. The state of the art is also considered to include the contents of Italian patent applications, or the contents of applications for a European or international patent which designates Italy, as they have been filed, which have a filing date earlier than that of the invention, even if they have been published or made available to the public later; this is on condition that their content is identical to that of the later patent document.

An invention is considered not obvious, and hence implying an inventive activity if, for a person of skill in the art, it is not obvious from the state of the art. The person of skill is a virtual figure who knows the state of the art at the priority date which generated the invention, who reads the prior art documents keeping in mind his scholastic knowledge and his acquired knowledge. The person of skill does not have any intuitive capacity but has a combinatory logic and the aim of his activity is to find a solution to the problem he is given. In deciding whether an activity is inventive or not, the documents comprising national applications, European applications or international applications designating Italy are not taken into consideration, when they have a filing date prior to that of the invention and have been published, or made available to the public, at a later date.

An invention, if it is to satisfy the requirement of inventive activity and be considered not obvious, must be intrinsically new. It must solve a technical problem and entail an improvement, that is, the solution of a new problem, even if it is only small, as compared to the state of the prior art in that field at that given time. The content of the invention must not be such as can be inferred from what existed beforehand, and it must entail the solution of technical and/or technological problems; therefore it must not be a mere combination of things or facts already known.

Types of inventions

Inventions can refer to a product, a device to obtain a product, or a method or a system.

Programs for processors, which are used to manage machines, plants, equipment or physical functions, such as for example road junctions, can be protected by means of a patent of invention, provided that the functions performed by the program are protected, and not for the way they are written. The protection of a program for a processor is protected for the way it is written by means of copyright. In a patent application, and therefore in a patent, several inventions can be present connected to each other, which generate autonomous and independent claims. Therefore a patent can have product claims, method claims, device claims and use claims.

They may be main inventions, if they have been conceived independently of any other invention, or derived if they employ elements of one or more earlier inventions. When an invention is dependent on a patent which is still valid and belongs to a third party, the dependent invention cannot be embodied without the authorization of the owner of the previously patented invention, and that owner cannot embody the dependent invention without the authorization of the owner of the same. There may also be:

  • inventions of improvement of what is already known, whether patented or not, and such inventions are subject to the regulations for derived inventions as regards their embodiment;
  • inventions of transfer when they entail a new use of something which is already known, or a previous inventive idea, by means of an original application of the same in a different field of the art and for purposes other than the original purpose;
  • inventions of combination, which are those inventions realized by an intimate union or amalgamation of elements taken from something known or from earlier inventions.

Procedure

In Italy a patent application must be filed through the portal set up for the purpose by the Ministry of Economic Development.

Without authorization from the Ministry of Productive Activities, residents in Italy cannot file their applications for a patent of invention, utility model or topography exclusively at the offices of foreign states or the European Patent Office or the World Intellectual Property Office as receiving office, nor can they file them at said offices before ninety days have passed from the date of filing in Italy, or the date on which the request for authorization was presented.

Once it has been filed, a patent application is first examined to see if it affects national defence, then it is examined to see if it is formally correct, and if it meets the characteristics required by the law relating to the search report transmitted by UIBM.

In some countries third Parties are allowed to oppose the definitive grant, by filing a reasoned request within a defined period, starting from the date the patent is granted by the Patent Office of said country. With regard to specific rules, an opposition procedure can involve a dialogue between the Parties, or it may be managed autonomously by the examiner with the owner of the right. It is possible to send the claims, translated into English, to the Italian Patent and Trademark Office (UIBM), or to pay a search fee. Sending the translated claims or paying the search fee must be done at most within two months from the filing date, otherwise the application is rejected. When it receives the patent application, UIBM assigns the class and carries out a pre-filtering to eliminate those applications which are obviously unpatentable.

If the patent application is not of interest for reasons of national defence, and if it is formally correct, it is sent to the European Patent Office (EPO) which carries out a prior art search and sends to UIBM, within nine months of the filing date, a report and a preliminary opinion. In an urgent case it is possible to ask UIBM (which may reserve the right to refuse) to carry out an accelerated procedure. EPO carries out the search on the basis of the claims translated with the support of the description translated using software, if not supplied at the moment of filing. In the event of doubts regarding the search, it is possible to ask for a copy of the translation done using software. EPO may object to a lack of inventive unity and carry out the search only on a part of the patent. After receiving the search report and the preliminary opinion (which normally occurs around nine months after filing and are forwarded by UIBM), it is possible to make voluntary comments or amendments to the text within eighteen months after the filing date of the application, when all the documentation is made accessible to the public and the application is examined by the Italian examiners, who must base their examination on the search report and can use the preliminary opinion issued by EPO only for consultation. A patent subject to the new Italian procedure, which is extended as a European patent or PCT, can have the right to have part of the search fee repaid, if the claims are the same as those of the first Italian filing.

It should be noted that the PCT search report drawn up by EPO, in some foreign countries, in particular the US, is often completely reformulated.

In the case of a request for early issue, if the search is still in progress, the patent is granted without a search, and in the public file it is noted that no search has been carried out. In Italy, a fee must be paid for every claim after the tenth.

There are also countries where third parties are allowed to present an opposition to the definitive grant by presenting a proper, reasoned request within a certain period from the date of grant by the Patent Office of that country. With regard to the specific rules, an opposition procedure can involve a dialogue between the parties, or it can be managed autonomously by the examiner with the owner of the right.

The field of protection of a patent

Both in Italian and in European law, it is a fundamental principle that the field of protection of a patent is determined by the content of the claims; the description and the drawings are considered only for the purposes of interpreting the claims, and not, therefore, in terms of integration. However, it should be noted that the description and drawings support and justify the claims juridically, and the claims cannot contain features that are not present in the description and the drawings.

Since the claims define the subject matter of the protection requested, they must be clear and concise, and they must be founded in the description and in the possible diagrams or drawings; they must also be comprehensible in themselves. If there are features in the description and/or in the drawings that are not present in the claims, said features are not protected. In the same way, if there are features in the claims that are not supported by the description and/or drawings, these features cannot be used in opposition against third parties.

Claims are independent or dependent, the dependent claims are justified and supported juridically by the respective independent claim. An independent claim is a claim which reproduces the essential characteristics (the so-called "bottleneck") of the invention for which protection is requested, and which serves to identify the subject matter of the invention. A dependent claim contains all the characteristics of the independent claims to which it is connected, and indicates other characteristics or variants for which protection is requested. It matters nothing that the dependent claim is in itself patentable with respect to the state of the art or even with respect to the independent claim to which it is connected. This is important only when the main claim which supports it is not patentable itself. In some systems, a dependent claim which is patentable in itself can be the object of a divisional application to be filed by the grant date of the main application.

In the case of infringement, protection is defined by the so-called subject matter of the invention as identified in the independent claims by the so-called person of skill in the art. It is important to note the substantive difference between inventive idea, found in the patent description, and the field protected by a granted patent found in the claims. A dependent claim is considered infringed only if the independent claim which supports and justifies the dependent claim is infringed. If, during an examination or administrative opposition, an independent claim were to be found invalid, it is possible to integrate it with one or more of the dependent claims, or by acquiring features contained in the description, thus achieving a new, valid, independent claim.

An independent claim must be read in its entirety and compared with what is considered to be interfering. During the life of a granted patent right, the claims can be voluntarily amended on condition that they remain within the limits of the content of the patent application as initially filed, and do not extend the protection conferred by the granted patent. Any amendment of the claims must entail a reduction of the field protected by the claims as granted. The amendments can be made either at UIBM, or at EPO, or in the course of a case. At UIBM the amendments must be requested before starting an active legal action and are requested when relevant prior art documents, previously unknown, become known. At EPO, or during a case, the amendments can be requested in order to overcome a possible case for annulment, due to the presence of relevant prior art documents. The amendments at EPO must be requested according to certain European legislations. In Italy, during a case, the limitations can be requested at every stage and degree of the judicial system, when the annulment of the right is requested. In some European systems, it is also possible to request amendments of the claims in the event of active actions for infringement. In Italy, the source where the material to be introduced or reformulated for the claims must be found is the description, drawings and dependent claims.

An independent claim must be read in its entirety and compared with what is deemed to interfere. The interference can be literal, when what is considered interfering can be read completely in the claim, or through equivalence. By equivalents we mean those technical means, instead of the means described in the patent at the moment of the priority date and claimed, the alternative use of which was obvious for the person of skill without having to apply a particular mental effort. Furthermore, the concept of equivalent means is also important in the examination procedure, that is, in the procedure which precedes the grant of a patent in the systems which have a prior examination to assess the relevance or irrelevance of a prior art document, or in a court of law as happens for example in Italy, to define the subject matter of the invention or its protected field. The formulation of claims for medicines provides that, when the medicine is a new product, it can also be protected as a medicine according to the protection granted to the substance.

When the product used as a medicine is in itself known, but without therapeutic characteristics, the substance or mixture of substances can be protected for specific use in a therapeutic treatment.

The protection of a patents

The protection of the exclusivity of patented inventions is both a civil and a penal matter. It concerns both patrimonial rights and the moral right of the inventor.

Judicial proceedings to protect the exclusivity right may be proceedings of ascertainment (to verify whether infringement has or has not occurred), prohibition (to prevent the continuance of the detrimental act), recovery of the damages (to obtain a fair compensation for the damage suffered as a result of the detrimental act), and also of claiming (when the ownership of a patent is in dispute). Judicial proceedings can be both active and passive. It should be remembered that it is not possible to make actions of negative ascertainment, which decide whether the product of a Company infringes a patent title of a foreigner who has no registered office or domicile in Italy.

Legal actions regarding patents for industrial inventions are characterized as movable commercial actions.

For any disputes on intellectual property beginning from 22.02.2014 and to which a foreign Company is a party, that is, "a Company, in whatever form it is incorporated, with its legal headquarters abroad, even having secondary headquarters stably representing it within Italian territory", only nine Specialized Sections are competent, which are: Bari (for judicial offices situated in the districts of Bari, Lecce, Taranto and Potenza, Cagliari (for judicial offices situated in the districts of Cagliari and Sassari), Catania (for judicial offices situated in the districts of Caltanisetta, Catania, Catanzaro, Messina, Palermo, Reggio Calabria), Genoa (for judicial offices situated in the districts of Bologna and Genoa), Milan (for judicial offices situated in the districts of Brescia and Milan), Naples (for judicial offices situated in the districts of Campobasso, Naples and Salerno), Rome (for judicial offices situated in the districts of Ancona, Florence, L'Aquila, Perugia and Rome), Turin (for judicial offices situated in the districts of Turin) and Venice (for judicial offices situated in the districts of Trento, Bolzano, Trieste and Venice).

According to the various cases, the actions are brought before the Specialized Section where the defendant is resident or domiciled, or before the one competent for the place where the plaintiff is resident or domiciled, or before the one competent for the place where the fact occurred, or before the Specialized Section in Rome. It should be remembered that the address noted in the register of patents is taken to be the elected domicile, in order to determine the competent Court and for all notifications, both administrative and judicial. Consequently, before proceeding with any action whatsoever, it is always advisable to verify in the register of patents not only if there are registrations or notes, but also if there have been amendments to the addresses or the domicile, or again in the content of the patent. When an action is based on facts which are assumed to damage the plaintiff's rights, this action can also be brought before the Specialized Section of the place in the district where the facts have been committed.

The burden of proving the invalidity or lapse of a patent in any case falls to whoever challenges the patent, while the burden of proving infringement falls to the holder of the patent. The owner of the rights of a patent may ask for a description or confiscation of whatever is alleged to infringe said rights. He may also request that the documents attesting or documenting the extension of the damage suffered shall be taken. The description and confiscation are carried out by a Judicial Officer, assisted when necessary by one or more experts and also by using any technical means or photographic means or any other means. The measure authorizing description and confiscation also defines the limits and the rules.

The owner of the patent rights can request temporary measures and can then ask for the manufacturing, trading and use of whatever is in infringement of the patent to be prohibited. Such a request is subject to the regulations of the Code of Civil Procedure concerning interim measures and also to the special norms of the Industrial Property Code. A request for prohibition can be made before or during the main lawsuit. When the judge decides for prohibition, he can establish a sum owed for every violation or non-observance occurring later, or for every delay in carrying out the measure.

Actions for ascertainment and negative ascertainment of validity are requested when a third party wishes to ascertain that one of his products does not infringe the specific rights of others, and where another party desires to verify the validity of the rights of others. Actions for negative ascertainment cannot be brought against third parties which do not have registered offices in Italy, unless said third parties have the patent available in Italy.

The penalties which a person who has been found to commit an infringement may incur consist of publication of the ruling, apportionment of the infringed articles to the owner of the patent as his property, the removal, deprivation or destruction of such articles, and the payment of a sum to compensate for the damage caused.

Judicial proceedings to defend one's patent rights have a certain cost and require a certain time to reach the final judgement. The cost must be assessed taking into account the value of the infringement. The time must be assessed in the context of the extent of the infringement and the damage caused by it. There are countries where a case for infringement lasts a reasonable time, but there are also countries where a case may last 6-7 years. In the same way, there are countries where the cost of a case is reasonable, but there are countries where costs are enormous.

Protection of a patents abroad

An application for a patent can be extended abroad, under the priority procedure, within 12 months of the first filing. If the extended text substantially corresponds to the original text as filed in Italy, it has the right of priority. If new features are introduced into the text, not connected to the original ones, such new features do not enjoy the right of priority.

A patent application can also be extended outside the priority procedure, that is, within 18 months from the first filing, provided that the content of the patent application has not been made available to the public (for example by putting the object containing the inventive idea onto the market, if by examining the object it is possible to understand the inventive idea), and provided that the subject matter of the invention has not been otherwise disclosed, or on condition that third parties have not in the meantime filed an identical application. Extension abroad can be done country by country, that is, taking advantage of one of the unified procedures such as that under the European Patent Convention or the international application Convention (PCT). The PCT provides a procedure which allows to delay the moment when one has to decide in which countries to confirm a patent title. The PCT procedure must be considered a delaying procedure not a granting procedure, whereas the European Patent procedure is a granting procedure. The unified procedures should be used taking into account the times required by such procedures to reach the grant, and also the problems that can arise after the grant. Indeed it should be noted that there are few countries (e.g. Italy) which allow a case for infringement to be started before the patent title has been granted.

A grant occurring when infringement has already started can even frustrate any interest in starting a defensive action.

An extension must be considered in the same way as any other production investment. The expenses for patent protection abroad must therefore find a correspondence in a reasonable turnover, and the relative margin of contribution or in the advantage over competitors which the owner hopes to acquire. Furthermore, the protection must take into account the possibility that only in certain countries is it worthwhile starting judicial proceedings, since actions in such countries are concluded in a reasonable time and give reasonable and expected judgements. In those countries where there is no security under the law, patents should be filed only after long meditation and evaluating the commercial reasons or effective technical collaboration.

Likewise, a patent title must be abandoned as soon as it is seen that there is no real interest in terms of competitive barrier or of turnover.

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