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Requirements for the validation of European Patents in Italy


The Italian translation of the granted text is not merely a formal requirement, since an inadequate translation may significantly curtail the rights of the patent owner. According to Article 57(2) of the Industrial Property Code (IPC), a case of infringement will be judged on the basis of the Italian translation as filed in case the scope of protection resulting therefrom is narrower than that conferred by the original granted text. While Article 57(4) IPC provides for the possibility of correcting a translation, Article 57(5) IPC states that the corrected translation cannot be enforced against anyone, who was already using the invention in good faith without infringing the patent according to the translation as originally filed.

At Buzzi, Notaro & Antonielli d'Oulx, in-house professionals carefully review and finely hone the translations to be filed with the IT PTO, with the aim of ensuring high quality and minimum risk for the patent owner.

1. Filing the translation of the claims of a published European Patent Application in order to obtain provisional protection in Italy under Art. 67 EPC.

  • unlegalized power of attorney [1]
  • full details of the European Patent Application and the date of publication
  • copy of the claims to be translated, preferably attached to copy of the abstract, specification and drawings, if any

2. Filing the translation of a granted European Patent to obtain validation in Italy under Art. 65(1) EPC

  • unlegalized power of attorney [1]
  • specification, claims and drawings, if any - as accepted for grant, possibly with the abstract, copy of EPO Form A1 and of Communications under Rule 51(4) and Rule 51(6)

The unextendible term for filing the Italian translation of the European Patent is three months from the date on which the mention of grant is published in the European Patent Bulletin. Such date must be communicated to our firm as soon as notified by EPO in order to proceed with filing.

3. Filing the translation of a European Patent as maintained in the amended form after opposition, pursuant to Art. 102(3) EPC

  • unlegalized power of attorney - if the previous translation to validate the Patent in Italy under Art. 65(1) was not filed through the same firm [1]
  • copy of the text of the European patent as maintained in the amended from after opposition - including specification, claims and drawings, if any - possibly with copy of EPO Form B1;

The unextendible term for filing the translation is three months from the date on which the decision to maintain the patent after opposition is published in the European Patent Bulletin. Again, such date must be communicated to our firm in order to proceed with filing.

[1] Term for late filing: 2 months

Requirements for filing patent and utility model applications in Italy


Today, most Applicants generally choose the European Route to secure patent protection in Italy, with little – if any - resort to a parallel national filing. While in principle a good strategy, it may not be the best option for really strategic cases, especially those for which Italy holds a sound interest. European filing and prosecution may be rather long, costly, and the European Patent is moreover open to Opposition for 9 months after grant, with revocation having effect for all designated states.

A direct filing in Italy has none of the disadvantages above. Particularly, if the direct filing is also a first filing in Italy, the claims in the application are searched by the EPO and a Search Report is issued. Most of all, the Search Report for this applications comes for free: the expenses for the Search Fee are entirely borne by the IT PTO.

Prosecution is generally expedite and straightforward. Grant is averagely a 30-month matter. Compare it to the PCT timeline and you get the picture. If a parallel EP is filed and prosecuted, pre- and post-grant events thereof have no impact on the Italian patent. An Opponent will be forced to go through national revocation proceedings.

As a further advantage, according to Art. 120(1) of the Italian Industrial Property Code (IIPC), infringement proceedings may be initiated even in the pendency of the patent application before the IT PTO.

Moreover, based on Art. 198 of the Italian Industrial Property Code (IIPC), Italian residents have to file patent applications (first filing) with the Italian Patent Office (e.g. Italian, EP or PCT patent applications) if the content of the applications might be of potential interest for the defense of the country. Thus, in case of doubts, EP or PCT applications having Italian inventors should be filed with the Italian PTO. Alternatively, a separate foreign filing authorization may be requested (which thus permits to directly file a foreign, e.g. US, application as first application).

Almost uniquely among EPC member states, Article 58(2) IIPC provides for the possibility of conversion into an Italian Utility Model application also in respect of revoked EPs. Definitely an option to bear in mind, especially in respect of European Patents revoked in Opposition or Appeal before the EPO under formal grounds such as added subject matter or insufficiency of disclosure. A less formal approach when assessing counterpart requirements under the IIPC may lead to a reinstatement of rights and even a successful enforcement before a National Court.

First filing

  • unlegalized power of attorney [1]
  • abstract, specification, drawings and claims [2]
  • translation of the claims in english [1]

Extension under Paris Convention

  • unlegalized power of attorney [1]
  • abstract, specification, drawings and claims [2]
  • certified copy of the foreign application, whose priority is claimed [3]
  • assignment of priority rights executed prior to the date of filing of the Italian Application, notarized and legalized up to the Italian Consulate or with an Apostille according to the 1961 Hague Convention - for member Countries.[4]

[1] Term for late filing: 2 months
[2] Term for late filing of the Italian translation: 2 months
[3] Term for late filing of the priority document: 6 months
[4] The assignment of priority rights is required only if the Applicant in Italy is different from that of the foreign application whose priority is claimed and is not required when the Applicant in Italy is one of the joint Applicants of the foreign application.

Requirements for filing trademark applications in Italy


First filing

Extension under Paris Convention

  • unlegalized power of attorney [1]
  • copy of the mark to be filed
  • certified copy of the foreign Trade Mark Application whose priority is claimed [2]
  • assignment of priority rights executed prior to the date of filing of the Italian Application, notarized and legalized up to the Italian Consulate or with an Apostille according to the 1961 Hague Convention - for member Countries.[3]

[1] Term for late filing: 2 months
[2] Term for late filing of the priority document: 6 months
[3] The assignment of priority rights is required only if the Applicant in Italy is different from that of the foreign application whose priority is claimed and is not required when the Applicant in Italy is one of the joint Applicants of the foreign application.

 
bna, Thursday, February 20, 2014  
Buzzi, Notaro & Antonielli d'Oulx (www.bnaturin.eu)