The Italian Patent and Trademark Office has announced that they will start the substantive examination on all patent applications for industrial invention, that indicate Italy as country of priority, as from 1 March 2011.
For all patent applications filed from 1 March 2011 onwards, this examination will start from the 18th month starting from the priority filing date and the Applicant will have 5 months’ time to reply, otherwise resulting in the refusal of the application.
Presently the examination procedure does not provide for any additional office actions on the part of the Examiner, who, after receiving the Applicant’s reply, will proceed with granting the patent certificate or not.
In case of a rejection, the Applicant has the possibility to lodge an appeal at the Chamber of Appeals.
It is possible that this examination extends retroactively to all patent applications for industrial invention filed from 1 July 2008 to 28 February 2011 and not yet granted.
For these patent applications, if the 18 month-period has already passed, the examination will start from the date of the office action and the Applicant will have 5 months’ time to reply, otherwise resulting in the refusal of the application.
On the contrary, if the 18-month period has not yet passed, the above terms (18 months for the commencement of the examination and 5 months for the Applicant’s reply) will apply, otherwise resulting in the refusal of the application.
In any case, even though the Search Report should confirm the validity of the patent application as originally filed, the Examiner should issue an office action, to which it is advisable to reply to point out the validity of the patent application and the Applicant’s will to obtain its grant.
Should the Search Report indicate, on the other hand, some objections, it is advisable to proceed with the amendments to the application as early as possible, and in any case before the end of the 18-month period mentioned above.