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Utility model in Italy

Definition

The patent for utility model is that patent title that protects an inventive idea able to provide machines or parts of machines, instruments, tools or objects of use in general, with particular efficiency or ease of application or use. In particular, in Italy, the utility model protects the innovation of a product and machines in their entirety: it does not include protection of the individual parts.

There are few countries where the law recognizes the utility model, and generally they have different contents and purposes from Italian legislation. Although their contents cannot always be compared with those envisaged in Italian legislation, utility models can be found, for example, in: Austria, Brazil, China, France, Germany, Japan, the Philippines, Poland, Portugal, Republic of Korea, Spain and Uruguay. In many countries, when an application for a patent of invention is made, an application is also made for a utility model because, since the latter is granted without an examination, it is granted quite quickly and can therefore be used in a case of infringement within a reasonable time frame.

In countries where legal actions can be started only after the patent has been granted, an application is often made for a utility model as well as for the patent of invention, because, since the former is granted without an examination, it is granted quite quickly.

In order to be patentable, in Italy and in most countries which recognize them, utility models must meet the same requirements as inventions, they follow the same rules and they have more or less the same rights. The level of inventive activity required for the validity of a utility model is lower than that required for a patent of invention.

For protection, practically the same rules which apply to inventions apply also to utility models. Italian law states that the effects of the patent for utility model extend to models which achieve equal utility, provide that they use the same innovative concept.

In any event it is best to define precisely the situations where a utility model exists and where an invention exists, according to prevailing Italian law, bearing in mind that according to Italian law an invention may in general contain a utility model, but rarely the contrary.

First of all, the Industrial Property Code states that new models may be patentable as a utility model when they are able to confer particular efficiency, or ease of application or use, on machines or parts thereof, instruments, tools or articles of general use such as new models consisting of particular conformations, arrangements, configurations or combinations of parts.

Therefore, in order to be the object of a utility model the goods to be patented must have, first of all, a material structure and therefore no manufacturing process or invention based on functional elements can be protected as a utility model.

Furthermore, the product must entail an increase in utility which must be to the benefit of their user.

Otherwise, whatever can be protected as an invention can also, generally speaking, be protected as a utility model, but the converse is not true.

In Italy, however, in order to get a clearer idea of the difference, it is best to refer to the quality of the contents, although this approach is considered by some as not correct, since they prefer an approach based on quantity, that is, the level of inventiveness.

Based on the formulation of Article 82 of the IPC we can observe that:

"Whenever the idea of a solution changes or improves the function or typical technical effect of an object, there is an invention, whereas when the improvements or changes concern the auxiliary steps and operations required to obtain the function or typical technical effect or are linked to the function, there is a utility model" .

According to the prevailing interpretation, therefore, we are in the field of utility models if the novelty of the invention consists only of the individual parts, or of their structural composition, when such composition leads to a new system of combination of the parts.

This means that where the new structural combinations or new structural arrangements do not alter the primary function of the device, object or machine, and provided that a technical problem is in any case solved, they are protected with a utility model.

But if the novelty consists only in the use of a new material, in general there will be no protection, just as there is no protection where there is just a simple combination of parts without any solution of a technical problem and without such parts modifying their functions.

If however the new combination or composition leads to an improvement or change of the primary function or typical technical effect, then a new functional combination of parts is brought about. In such a case, the object thus embodied, whether it be a device or a machine, can be protected for this new functional combination as an invention.

Whoever applies for a patent for an industrial invention is entitled to make a simultaneous application for a patent for utility model, which would be valid in the event that the application for a patent of invention were not granted, or were granted only in part.

If the application is for a model rather than an invention, or vice versa, the Italian Patent Office invites the applicant to modify the application itself, within a certain time limit, though the application is effective from the date of the original application.

It is also possible, in a Court of Law, for a patent of invention (considered invalid) to be transformed into a patent for utility model, and vice versa.

The protection conferred by a patent for utility model extends to the models that give equal utility. This means that for utility models too the concept of equivalence applies with reference to the innovative concept that characterizes the patent.