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New patenting procedure in Italy

26 June 2008

From 1st July 2008 the Italian patenting procedure is about to change. Any first filing of patent applications in Italy - whether in the name of an Italian company or of a foreign company - will be subject to a prior art search according to the following:

  1. The prior art search and the related preliminary opinion will be conducted by the European Patent Office. A translation from Italian into English of at least the patent claims will thus be required.
  2. If no English translation of the patent claims or of the patent specification is supplied, a search fee of Euro 200.00 is due. If said translation is supplied by the applicant, the search fee is not to be paid.
  3. The search results and the preliminary opinion are expected to be provided to the applicant for the patent reasonably prior to the deadline for a foreign prosecution claiming said priority.
  4. The searches will be conducted on first filings.

According to the foregoing, the new Italian patenting system can offer considerable advantages also to foreign applicants for Italian patents, due to the following:

  1. Upon first filing a foreign patent application (e.g. Japanese, US, German, Chinese), the applicant therefor can file jointly a corresponding Italian patent application, thus obtaining a prior art search and a preliminary opinion about nine months from the Italian filing date at the sole cost for translating the claims from Italian into English.
  2. Said search results can be used in view of any foreign prosecution of the patent application (e.g. as a European or a PCT application).
  3. The search results and the preliminary opinion remain secret until the 18th month from the Italian filing date.
  4. Said search costs Euro 200.00 if no English translation of the text (advisable) or of the claims is supplied.
  5. In case of subsequent foreign prosecution as European patent application, the search fees connected with said procedure should be reimbursed (currently about Euro 1,050.00), provided that the text as prosecuted abroad as European patent application is not different from the original text on which the search was conducted.

Said system thus allows:

  1. to obtain a European search report in short times, and in any case prior to any final deadline for foreign prosecutions and still in secrecy, and to make possible amendments of the patent text in view of said report
  2. an applicant (US, for instance) can become aware of the results of the European search and compare them with the search report issued within his/her own patent system
  3. to obtain a document, which can be used in case of legal actions
  4. a considerable reduction of costs

IP APPS

EU IP Codes 2.0 is the brand new version of the first application to consult all the European and Italian Regulations on Industrial Property in one app.

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