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The Patent Procedure: Novelty Search, IP Offices, Procedures and Costs

Published in: Intellectual Property
by Matteo Saleri
Home > The Patent Procedure: Novelty Search, IP Offices, Procedures and Costs

A patent is the title of industrial law that provides protection for an invention. Protection is achieved through the granting of an exclusive right (monopoly) over the invention for a specified period of time.

As explained in our previous in-depth discussion (Patenting an invention: how to do it?), a patent can protect different types of inventions. The legal framework governing the matter at the Italian level is contained within the Industrial Property Code.

But how do I know if my idea is actually new? What are the timelines and administrative procedures for obtaining a patent? How much does it cost to obtain such a title? Is it better to patent abroad right away or to start with an Italian patent? Who can I get assistance from to identify the best protection strategy and to manage the patenting process?

In this article, we answer all these questions.

The patent novelty search

Before proceeding with drafting and filing a patent application, the Canella Camaiora Law Firm always recommends conducting a patent novelty search.

Although an optional activity, this search offers several benefits to the inventor or patent applicant. More specifically, the novelty search makes it possible to:

  1. Verify requirements: The search is essential to determine whether the invention has already been registered by someone else or whether similar technologies exist in the public domain. It then allows an assessment of whether the invention meets the essential requirements (novelty, inventive step, and industriality).
  2. Save time and resources: By conducting a novelty search before the application is filed, you avoid wasting time and money in filing a patent application that could be rejected by the relevant offices or later declared invalid.
  3. Best drafting the patent application: Through this activity, the patents and publications most relevant to the invention you want to protect are identified. These documents are useful for strengthening the content of the patent application, highlighting the strengths of the invention by emphasizing differences from the known art and prior art that have emerged.
  4. Improving the invention: Novelty search provides an opportunity to better understand the technical field in which the invention fits and to learn about other inventors’ solutions to the same problem. This also makes it possible to improve and refine the invention so that it becomes even more competitive and innovative.

It also provides the chance to make an informed choice between invention patent and utility model patent, allowing the inventor to adopt a protection strategy that is more appropriate and targeted to his or her needs.

In conclusion, patent novelty search proves to be a valuable tool for ensuring effective invention protection and optimizing subsequent activities.

Choosing the territory

Another crucial aspect is the identification of the territory of interest, namely the countries in which protection is sought.

It is important to note that, as with trademarks, the principle of territoriality applies to patents: the exclusive right is granted to the applicant only in the countries where the patent application is filed or extended.

In other territories, it is not possible to prevent third parties from using the invention because you do not have a monopoly right and, therefore, the invention falls into the public domain. On the other hand, it is always possible to prohibit third parties from importing–within the territories where the patent has been applied for–products incorporating the invention.

Consequently, it is crucial to determine the office where you wish to begin the patenting process. In practice, the initial choice falls between the following three options:

  1. Italy, with filing of the application at the UIBM (Italian Patent and Trademark Office);
  2. Europe, with filing of the application with the EPO (European Patent Office);
  3. World, with international filing at the WIPO (World Intellectual Property Organization).

We would like to point out that the applicant can extend the patent application to other territories within 12 months from the filing date (so-called “one-year rule”).

Under these premises, our Law Firm generally recommends starting the patenting process by filing the application in Italy in order to keep costs down and later choose the most attractive foreign territories for commercial development of the innovation.

Registration procedures and timelines

Procedures and timelines vary depending on whether one chooses to file an Italian, European or international patent application (the latter so-called “PCT”).

UIBM (Italy)

La procedura presso l’Ufficio Italiano Brevetti e Marchi (UIBM) si svolge attraverso una serie di passaggi:

  1. Redazione e invio della domanda: Il primo passo è preparare la domanda di brevetto. Quest’attività include la descrizione dettagliata dell’invenzione, le rivendicazioni (che definiscono la portata della protezione richiesta), i disegni (se necessari), un riassunto dell’invenzione e l’indicazione del nome del richiedente e dell’inventore. Una volta predisposta tutta la documentazione necessaria, si procede con l’invio telematico all’UIBM il quale assegna immediatamente un numero di domanda e una data di deposito.
  2. Esame formale: L’UIBM verifica che la domanda sia stata presentata in modo adeguato, rispettando le regole formali prescritte dall’ufficio stesso. Se ci sono difetti formali, l’UIBM richiede che vengano corretti entro un certo periodo di tempo.
  3. Ricerca di anteriorità e relazione di ricerca: Dopo l’esame formale, l’UIBM – con il supporto dell’EPO – svolge una ricerca di anteriorità per valutare la novità e l’attività inventiva del trovato. A seguito della ricerca, viene redatta una relazione di ricerca che viene inviata al richiedente a distanza di circa 9 mesi dal deposito. In caso di report negativo, è possibile depositare una replica contenente osservazioni o eventuali emendamenti alla descrizione e alle rivendicazioni.
  4. Pubblicazione della domanda: Circa dopo 18 mesi dal deposito, l’UIBM pubblica la domanda di brevetto. Per particolari esigenze, si può chiedere all’ufficio di pubblicare immediatamente la domanda (ovvero già dopo 90 giorni).
  5. Esame sostanziale: Dopo la pubblicazione della relazione di ricerca, l’esaminatore dell’UIBM svolge l’esame sostanziale dell’invenzione, basandosi sui risultati della ricerca di anteriorità e della relazione della ricerca nonché su eventuali modifiche alla documentazione brevettuale.
  6. Concessione del brevetto: Se la domanda supera l’esame sostanziale, l’UIBM concede il brevetto altrimenti lo rigetta. Il procedimento si esaurisce entro 24-25 mesi.

La procedura riguardante il brevetto per modello di utilità differisce leggermente rispetto a quella sopra riportata. Semplicemente non viene svolta la ricerca di anteriorità, rendendo così la fase di esame sostanziale meno severa rispetto a quella del brevetto per invenzione.

The procedure at the Italian Patent and Trademark Office (UIBM) is carried out through a series of steps:

  1. Drafting and sending the application: The first step is to draft the patent application. This activity includes a detailed description of the invention, claims (defining the scope of protection sought), drawings (if necessary), a summary of the invention, and naming the applicant and inventor. Once all the necessary documentation has been prepared, it is sent electronically to the UIBM, which immediately assigns an application number and a filing date.
  2. Formal Examination: The UIBM verifies that the application has been properly filed, complying with the formal rules prescribed by the office. If there are formal defects, the UIBM requires that they be corrected within a certain period of time.
  3. Novelty search and search report: After the formal examination, the UIBM-with the support of the EPO-conducts a novelty search to assess the novelty and inventive step of the invention. Following the search, a search report is prepared and sent to the applicant approximately 9 months after filing. In case of a negative report, a reply containing comments or possible amendments to the description and claims can be filed.
  4. Publishing the application: Approximately 18 months after filing, the UIBM publishes the patent application. For special needs, the office may be asked to publish the application immediately (i.e., as early as 90 days).
  5. Substantive examination: After publication of the search report, the examiner of the UIBM conducts the substantive examination of the invention, based on the results of the novelty search and the search report as well as any changes to the patent documentation.
  6. Granting of the patent: If the application passes the substantive examination, the UIBM grants the patent otherwise rejects it. The process is completed within 24-25 months.

The procedure regarding the utility model patent differs slightly from that above. There is simply no novelty search conducted, thus making the substantive examination phase less stringent than that of the invention patent.

EPO (Europe)

The patenting process at the European Patent Office (EPO) includes several steps:

  1. Filing of the patent application: As with the Italian filing, here the application must include the summary of the invention, description, claims and drawings. This application, however, must be written in one of the EPO’s three official languages (English, French or German).
  2. Preliminary Examination: Once the application is filed, an examiner checks the documentation submitted, verifying that the application is properly formalized.
  3. Novelty search: If the preliminary examination is passed successfully, the EPO conducts a novelty search (identical to that carried out for Italian patents), the result of which is provided to the applicant, within 6 months, through a report that includes a preliminary opinion on the patentability of the invention.
  4. Publication of the application: 18 months after filing, the application is published in the European Patent Bulletin and made accessible in the EPO database.
  5. Substantive examination: If the applicant decides to continue the process, he or she must request substantive examination of the application within 6 months of the publication date. At this stage, an examination division (consisting of three components) checks whether the invention meets all the patentability requirements set out in the Convention on the Grant of European Patents.
  6. Grant of patent: If the patent is granted, the decision is published in the European Patent Bulletin with effect backdated to the date of publication.
  7. European Patent Validation in Member States of Interest: Once a European patent (denoted by the acronym EP) is granted, the applicant receives a “package” of national patents. Each patent must be validated in the individual designated states within a specified time period (usually 3 months after grant). Many countries require that the patent description and claims be translated into their official language and filed with the national office. In most countries, a validation fee must also be paid.

It should be remembered that the European patent-unlike the European Union trademark and design-is not a unitary title, but the various mutually autonomous national design rights descend from it.

To make up for this dissimilarity and to make the protection of the invention easier, the figure of the unitary European patent was recently introduced, which – unlike the European patent – is a single title with unitary effects (in up to 25 EU member states).

The procedure for obtaining such a patent is identical to the one described above with the only distinction that, when choosing the countries in which to validate the patent (item 7 – “validation in member countries”), one can opt for unitary effects (i.e., European unitary patent). This solution results in significant cost savings and simplification of subsequent national procedures.

WIPO (International “PCT”)

The patenting process at the World Intellectual Property Organization (WIPO) is done through the system provided by the Patent Cooperation Treaty (so-called PCT), which allows protection to be obtained in several countries with a single application.

Such an application has the same effect produced by filing several separate applications with national offices but with the advantage of unifying the first part of the patenting procedure (so-called international phase).

The PCT procedure consists of two main stages, which in turn are divided into sub-stages:

International Step

  1. Filing the International Application: The first step is to file an international patent application, which must be filed in one of the languages authorized by the Treaty (which includes English) and must contain a description of the invention, one or more claims, one or more drawings (if necessary) and an abstract. The application may be filed directly with WIPO or with national or regional offices.
  2. International search and international search report: After filing, within 4 months from the filing date of the PCT, a designated international search office (ISA) performs the novelty search on the invention. The ISA then issues an international search report (international search report) listing the relevant novelty search documents and offering a preliminary assessment of the patentability of the invention (written opinion).
  3. International publication: within 6 months, WIPO publishes the international patent application and international search report on the International Register (PATENTSCOPE).
  4. International preliminary examination (optional step): In the event that the international research and written opinion are negative, and should you wish to respond to said report, you are given the option of asking WIPO to conduct the international preliminary examination (international preliminary examination).Although optional, this step is the only one that allows the applicant to amend and present arguments in support of his or her application, seeking to convince the WIPO examiner of the soundness of the invention.

 

National (or Regional) Phase

  1. Entry into National or Regional Phase: After the international phase, within a period ranging from 8 to 18 months from the date of application, the applicant must start the so-called “national” or “regional phase,” which involves entering the patent granting procedures of designated offices in individual countries or regions.
  2. National or regional examination: Each national or regional office will examine the application according to its national laws and guidelines, taking into account the international search, report and, if required, the outcome of the preliminary examination.
  3. Grant of patent: If the application passes the examination of the national or regional office, a patent valid for the territory of that country or region is granted.

This is the general procedure, however, there may be additional specifics depending on the country or region for which protection is sought.

UIBM, EPO and WIPO Fees

Turning to fees, the first cost to consider, as it is inescapable if you are considering filing a patent application, are the fees required by the office where you intend to proceed with the filing.

The fees required by different offices are broken down as follows:

  • UIBM
    • € 50 application filing fees;
    • € 49 general assignment filing fees (if the file was handled by proxies);
    • Novelty search is free of charge.
  • EPO
    • € 130 application filing fees;
    • € 1.390 novelty search fees;
    • € 1.750 (optional) fees for substantive examination of application;
    • € 990 by way of fees for publication and concession activities;
    • € 630 by way of fees for designating the states for which the patent is to be validated;
    • + fees charged by national phase by individual offices.
  • WIPO
    • € 1.409 fees for transmitting and filing the international application;
    • € 1.775 novelty search fees;
    • € 1.840 (optional) fees for international preliminary examination of application
    • + Fees charged for national or regional stages by individual offices

The above costs give an idea of the difference in fees required for the various procedures.

With regard to EPO and WIPO, it should also be kept in mind that, in addition to the fees charged by the offices, there are the costs of translating the patent.

After the patent is granted, a final item of expense in patenting is the fees required by the various IP offices to keep the title alive, should one wish to enjoy the monopoly for the duration granted by law (i.e., 20 years).

This last fee is different for each state and is required after the first few years of the patent’s life (for example, in Italy, it is required from the fifth year of life).

Why get assistance from an IP consultant

Seeking strategic patent counseling and expert assistance in dealing with the patent process is crucial for multiple reasons.

First of all, as seen, there are multiple patent procedures, and identifying the right one for your case is not always easy. Moreover, they are particularly complex and require in-depth knowledge of the laws and protocols of individual IP offices.

A specialized patent attorney can guide the inventor (or applicant) through this intricate process, ensuring that the application is filed correctly and that all necessary requirements are met. In addition, an IP consultant can conduct a proper evaluation of the invention, understanding its market potential and seeking to protect it according to the best possible strategy.

It is equally important to entrust the management of a patent portfolio to an experienced patent attorney who can provide useful advice on when and where to file applications and how to maintain existing patents and address any conflicts. This role is critical, as it saves the inventor or company valuable time and resources, allowing it to focus on the technical and commercial development of the innovation.

In case of legal disputes, counsel can provide assistance and representation, defending the rights of the patent owner. So, patent counseling is an essential investment in protecting one’s innovations and maximizing their commercial value.

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Publication date: 29 August 2023
Last update: 24 November 2023
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