Last Updated March 06, 2019

Law and Practice

Contributed By LGV Avvocati

Authors



LGV Avvocati is an independent law firm located in the heart of Milan, specialising in industrial and intellectual property protection, including extra-judiciary matters and litigation. LGV has extensive experience of providing cross-border legal assistance, and benefits from numerous contacts with national, European and international legal professionals and experts. The firm is made up of 11 professionals, four of whom are predominantly dedicated to patent law work. The team has notable experience in matters concerning patents and utility models, and deals with patents and portfolios of patents in every sector of technology, from traditional areas such as textile machinery and machine equipment to modern technologies such as microchips and electronics. It assists clients with the protection, enhancement, valorisation and management of inventions, and offers English, German, Russian, French and Spanish language capabilities.

Under the Italian legal system inventions can be protected as patents for industrial inventions, utility models and know-how. These forms of protection are all based on statutory law: the principal source of law is the Code of Industrial Property – Statutory Instrument No 30/2005 (IPC), which re-organised all prior legislation on industrial property, also providing for common principles on certain aspects of protection. The articles related to know-how (Articles 98 and 99 of the IPC) codify the case law developed by Italian courts.

The grant procedure for patents and utility models requires an application to be filed at the Italian Patent and Trade Mark Office (Ufficio Italiano Brevetti e Marchi – UIBM). A formal examination is carried out and, as long as patents are concerned, a substantive examination of the requirements of novelty and inventive step follows. The search for prior documents is carried out by the European Patent Office (EPO) on the basis of a convention between the UIBM and the EPO. The UIBM issues a statement, by which it either grants the invention or requests changes.

After a period of not more than 18 months from the filing date of the application, the UIBM makes the application and the relevant attachments accessible to the public. The applicant may request a prior publication but not before 90 days from filing. Once publication or, as an alternative, service to the counterparty has been completed, the applicant may start proceedings requesting certain remedies, such as search orders or injunctive relief. The issuing of a court judgment requires the prior grant of the patent.

In relation to know-how there is no grant or registration procedure. Protection arises automatically pursuant to law and, more precisely, if the following requirements are met:

  • the information should be secret in that it is not, as a whole or in the exact configuration and combination of their components, generally well known or easily accessible for experts and operators in the field;
  • the information should have an economic value due to it being secret; and
  • the information should be subjected (by those who legitimately control them) to measures which may be deemed reasonably adequate to keep it secret.

The granting procedure for patents and utility models usually lasts from two to three years. However, the Italian system grants anticipated protection. See 1.2 Grant Procedure,above. According to general rules (Article 201 of the IPC), representation by a patent attorney is not mandatory during the grant procedure of the UIBM. However, representation is the rule, not the exception. The average professional fees are around EUR2,500-3,000 for each application; the official fees due depend on the length of the patent: the base fee is around EUR75 but a EUR45 fee is due for each claim beyond the tenth claim.

Patents last for 20 years, starting from the date of filing of the application. Their duration cannot be extended (for exceptions and further details see 1.6 Further Protection After Lapse of Maximum Term, below). The duration of a utility model is ten years from the date of filing of the application. The duration of know-how is potentially unlimited, provided the above-mentioned requirements are met.

Article 66 of the IPC, applicable both to patents and utility models, provides for the exclusive right to implement the invention and obtain a reward therefrom in the country’s territory. Italy is a contracting state of the European Patent Convention and of the Unified Patent Agreement. The mentioned rule implements the harmonised substantive law. A product claim confers the right to prevent unauthorised third parties from producing, using, putting on the market, selling or importing for such purpose. A method claim confers the right to prevent third parties from applying such method, as well as from using, putting on the market, selling or importing for such purpose the product directly obtained from the method at issue.

The owner of know-how has the right to prohibit third parties, subject to his consent, from acquiring, disclosing to third parties or using that information and experience in an unauthorised manner, except for cases in which the third party has obtained it in an independent manner by another third party.

These principles underlie the right to obtain an injunction as well as to claim damages. For further details on remedies see 2.1Actions Available Against Infringement and 6.1 Remedies for the Patentee,below.

The owner of patents should also pay the fees after the grant of the patent starting from the time when the patent reaches the fourth anniversary of the filing date. From then on, fees are due annually. Owners of utility models pay five annual fees when filing the application. After five years the fee for another five-year period is due.

With regard to further protection after the lapse of the maximum term, Supplementary Protection Certificates (SPCs) may be granted for specific product sectors. In the past, SPCs were regulated under Italian Law No 349 of 19 October 1991. Today, in Italy, EU Regulations Nos 469/2009, 1901/2006 and 1610/96 apply, providing additional protection for specific pharmaceutical and plant protection products which have been approved for sale and are covered by a national patent.

According to previous Italian national law, the maximum limit amounted to 18 years. With the expiry of SPCs issued under Italian national law, such legislation may be considered to have lost some relevance. According to the principle set out in the EU Regulations, an SPC may receive any product that is protected by a national patent and the commercialisation of which is subject to specific authorisation and does not already have a certificate. The SPC confers the same rights as those provided for by the basic patent.

The application must be lodged with the UIBM, within six months of completion of service of the marketing authorisation. The SPC takes effect when the basic patent expires and is valid for up to five years. In the case of pharmaceuticals, the SPC may be extended once for six months if a paediatric investigation plan has been prepared. The overall protection a patent and an SPC can provide, and thus the sum of the patent term and the added exclusivity period, cannot exceed 15 years from the granting of the first marketing authorisation.

During grant proceedings of patents and utility models, third-party observations are not allowed and third parties do not have the right to participate in the proceedings.

Should a decision of the UIBM totally or partially refuse the grant of a registered intellectual property right, such as patents or utility models, an appeal may be filed with the Board of Appeal within 60 days from the date of receipt of the communication of the decision. Against the decisions of the Boards of Appeal that are issued in the form of a formal judgment, an appeal to the Italian Supreme Court (Corte di Cassazione) may be made.

Patents and utility models lapse in case of failure to pay annual fees. A possible remedy is to pay a delay charge (EUR100.00) within six months from the expiration date. After this time limit the UIBM serves notice on the interested party by way of registered post informing the party that the payment of the due fee has not been settled within the prescribed deadline. After 30 days from the mentioned communication, the UIBM, via specific annotation on the patent registry acknowledges the lapse of the patent for non-payment of the annual fee, and consequently publishes the notice of lapse in the Official Bulletin.

LGV avvocati

Vi Via Privata C.Battisti 2
20122 Milano

+39 02 54 06 97 1

+39 02 54 06 97 30

info@lgvavvocati.it www.lgvavvocati.it
Author Business Card

Authors



LGV Avvocati is an independent law firm located in the heart of Milan, specialising in industrial and intellectual property protection, including extra-judiciary matters and litigation. LGV has extensive experience of providing cross-border legal assistance, and benefits from numerous contacts with national, European and international legal professionals and experts. The firm is made up of 11 professionals, four of whom are predominantly dedicated to patent law work. The team has notable experience in matters concerning patents and utility models, and deals with patents and portfolios of patents in every sector of technology, from traditional areas such as textile machinery and machine equipment to modern technologies such as microchips and electronics. It assists clients with the protection, enhancement, valorisation and management of inventions, and offers English, German, Russian, French and Spanish language capabilities.

{{searchBoxHeader}}

Select Topic(s)

loading ...
{{topic.title}}

Please select at least one chapter and one topic to use the compare functionality.