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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.

 
bna, Friday, December 9, 2016  
Buzzi, Notaro & Antonielli d'Oulx (www.bnaturin.eu)