We specialize in providing the following services: patent searches, filing and prosecution of national patents for invention and for utility model in Italy; filing, prosecution and opposition of European Patents; national validation of European Patents in Italy, San Marino and in the other European Countries.
Validation of European patents in Italy
A request for validation must be filed within the deadline of three months of the date of publication of the mention of grant of the patent on the European Bulletin (or within the subsequent two months, taking advantage of the further processing procedure). A translation into Italian of the full specification must be provided.
In order to file a request for validation, we require: a Power of Attorney signed by the applicant (an emailed copy is acceptable for filing – no notarization/legalization is required); a translation of the full specification into Italian (a translation from English, French or German into Italian can be prepared by our firm); a clean copy of the drawings.
NOTE: If the Power of Attorney is not available at the time of filing, it is possible to file it later (within 60 days of the filing date of the application), upon the payment of a surcharge.
Italian patent for invention
In order to protect an invention in Italy, it is possible either to file a national patent application (which can claim the priority of a foreign application, filed during the preceding 12 months period), or to file a European patent application, possibly at the national phase of a PCT application. It is not possible to directly enter the Italian national phase of a PCT application, that is without filing a European application.
Italian national patents have duration of 20 years, starting from the filing date. The patent application (description and claims) must be filed in Italian language. If a foreign priority claim is not claimed, a translation of the claims into English must be filed along with the application. Only in the case that a foreign priority is not claimed, the European Patent Office will perform a Search, and will issue a Search report, usually 8-10 months after the filing date. Then, if the application meets the requirements for patentability (novelty and inventive step), the Italian Patent and Trademark Office will grant the patent. Otherwise, if the application does not meet the requirements for patentability, the Italian Patent and Trademark Office will issue an Official Action, based on the results of the Search.
In order to file a patent application without claiming a foreign priority, we need: instructional letter containing the full name and address of the applicant (in case of legal entity, its full official name and address) and data concerning the inventors (full names and nationality); description, claims, abstract; a set of drawings (if any); a Power of Attorney signed by the applicant (an emailed copy is acceptable for filing – legalization is not required).
If a foreign priority is claimed, English translation of the claims is not required. In this case, the Italian Patent and Trademark Office will only examine whether the application meets the formal requirements for patentability. Search and substantial examination will not be carried out. Usually, the Italian Patent and Trademark Office will grant the patent 2-3 years after the filing date.
In order to file a patent application claiming a foreign priority, we need: instructional letter containing the full name and address of the applicant (in case of legal entity, its full official name and address), data concerning the inventors (full names and nationality), and priority data; description, claims, abstract; a set of drawings (if any); a certified copy of the priority application and a translation into Italian thereof; a Power of Attorney signed by the applicant (an emailed copy is acceptable for filing – legalization is not required).
Annuities must be paid every year, starting from the 5th annuity, and must be paid by the last day of the filing month, for the following year. For instance, if a patent application is filed on 1st January 2010, the 5th annuity will be due on 31st January 2014.
Italian patent for utility model
Italian utility models have duration of 10 years, starting from the filing date. The patent application (description and claims) must be filed in Italian language. English translation of the claims is not required. The Italian Patent and Trademark Office will only examine whether the application meets the formal requirements for patentability. Search and substantial examination will not be carried out. Usually, the Italian Patent and Trademark Office will grant the patent 2-3 years after the filing date.
In order to file the application, we need: instructional letter containing the full name and address of the applicant (in case of legal entity, its full official name and address), data concerning the inventors (full names and nationality), and priority data (if necessary); description, claims, abstract; a set of drawings; a certified copy of the priority application (if necessary) and a translation into Italian thereof; a Power of Attorney signed by the applicant (an emailed copy is acceptable for filing – legalization is not required).
Annuities: utility models require the payment of a quinquennium renewal fee, which is due 5 years after the filing date.
