Patents
Introduction
The patent is a legal instrument that confers on the holder the right to prevent third parties from using the patented invention within the territory of the state in which the patent is in force. Owing to this right, the holder can prohibit, i.a., the manufacturing, marketing, importation and use by third parties of the patented invention.
The exclusive right conferred by a patent is limited to the territory of the state or states in which the patent has been granted, and the maximum duration thereof, non-extendable, is usually 20 years from the filing date. In countries where patent protection has not been applied for or has not been granted, the manufacturing, marketing, importation and use of the invention are not subject to the exclusive rights above. However, a patent prevents importation into the territory of the state wherein patent rights are in force of objects corresponding to or incorporating the patented invention manufactured in countries wherein no corresponding patent rights are in force. A patent also allows the prohibition, within the territory of the state, of the manufacturing of patented objects even when these are exclusively intended for export to countries wherein no corresponding patent rights are in force.
The patent right does NOT per se provide a right for the holder to manufacture and market the patented invention. In fact, the invention that is the subject of the patent could at the same time be an improvement of a previous invention that is in turn covered by a third party’s patent, and fall within the scope of protection of the latter. In this case, the holder of later patent has an exclusive right over the improved invention but is not granted any right to use the invention covered by the earlier patent.
Abstract concepts such as scientific theories, methods for intellectual or commercial activities, computer programs, methods of therapeutic or surgical treatment and of diagnostic methods, as such, are expressly excluded from patent protection. On the other hand, technical processes based on the use of computer programs may be patented, provided that they possess the prescribed requirements of patentability.
Furthermore, for innovations consisting of particular conformations, arrangements or combinations of parts of machines, instruments, tools and objects for use in general, patenting in the form of a utility model is provided, with a duration limited to 10 years from filing.
Prior art searches
Prior to filing a patent application, it is advisable and recommended to verify whether the invention intended to be protected is actually new and non-obvious.
For this purpose, the most immediate and effective method consists of carrying out investigations in published patent literature, through certain international databases that can be searched either by keywords or by using the International Patent Classification, or with mixed search strategies. Some databases are accessible and freely searchable via the Internet, on the websites of national or supranational patent offices, such as for example:
UIBM – Italian Patent and Trademark Office – www.uibm.gov.it
WIPO – World Intellectual Property Organization – www.wipo.int
EPO – European Patent Office – www.epo.org
USPTO – United States Patent and Trademark Office – www.uspto.gov
These databases also allow full copy download of the patent documents of interest.
Preliminary searches in the patent field also make it possible to verify the existence of any third-party rights which, in addition to being prejudicial to patentability of an alleged innovation, could restrict freedom to operate as well. Periodic checks in this regard also make it possible to keep track of the activity of competitors.
Filings in Italy and abroad
To obtain a patent, it is necessary to file a patent application. The patent application must contain a detailed description of the invention and the drawings necessary for its understanding. A fundamental part of a patent application consists of the claims, which follow the description and define the scope of protection.
The patent application is generally kept from public access for a maximum 18 months, after which it is made available to the public. At the request of the holder, publication of the patent application may be anticipated to 90 days from the filing of the application.
A national patent application can be “extended” to other countries within a priority term of 12 months from the filing date of the application, with the benefit of the grant of the filing date of the (national) priority application as the effective date of the subsequent (Convention) application(s). As a rule, after the first publication of a member of a patent family (usually a patent application) it is no longer possible to extend patent protection to other countries than those already covered by the patent family.
At present, a patent in Italy is granted following a substantive examination in view of a PCT-type search report drafted by the EPO on behalf of the Italian PTO. This only applies to applications that are first filings, i.e. when no priority is claimed. An Italian patent is presumed valid until proven otherwise, and to challenge validity thereof Court Proceedings have to be initiated.
The extension of patent protection abroad can be requested, within the terms mentioned above, either through the national route by filing a corresponding application in each of the countries of interest, or by relying on international conventions/treaties that allow the obtaining of a regional patent: the European Patent Convention for the European Union and a series of other continental countries, the OAPI Convention for a group of African countries.
Pursuant to the international PCT treaty (“Patent Cooperation Treaty”) it is also possible to file an “international” patent application designating one or more of the countries adhering to the treaty itself. A list of countries adhering to the PCT treaty is available at the following address:
https://www.wipo.int/export/sites/www/pct/en/list_states.pdf
The PCT international patent application is subject to a novelty search and, optionally, to a substantive examination, and in practice constitutes a sort of “reservation” that allows extending the 12-month priority term up to 30-31 months from the date of first filing. The decision regarding the request for patents abroad can therefore be deferred by a further 18-19 months.
The European Patent Convention is the most widespread system for obtaining patent protection at the European level. The European Patent Convention can be chosen as a Convention extension of a patent application already filed in Italy or even as a first filing option, as an alternative to filing in Italy.
A list of the countries adhering to the European Patent Convention is available at the following address:
Maintenance of rights
As mentioned, in general, and except for the exception of some countries, patents and patent applications for invention have a duration of twenty years from the filing date and are subject to the payment of annual maintenance fees.