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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

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