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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.
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:
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.
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:
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.
Procedures and timelines vary depending on whether one chooses to file an Italian, European or international patent application (the latter so-called “PCT”).
La procedura presso l’Ufficio Italiano Brevetti e Marchi (UIBM) si svolge attraverso una serie di passaggi:
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:
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.
The patenting process at the European Patent Office (EPO) includes several steps:
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.
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:
National (or Regional) Phase
This is the general procedure, however, there may be additional specifics depending on the country or region for which protection is sought.
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:
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).
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.