Patenting procedure in Italy
How is a patent application filed in Italy?
The application must be filed in Italian, electronically or in paper form at a Chamber of Commerce or directly with the Italian Patent and Trademark Office (UIBM), and must contain an abstract, the description of the invention, the related claims and, if necessary for understanding, the drawings. An English translation of the claims is required, or payment of a "translation" fee of EUR 200.00.
What happens after the patent application is filed in Italy?
The patent application is sent to the European Patent Office (EPO), which carries out a preliminary examination of it. The European examiner identifies the documents that in their view describe the state of the art against which the patent application is compared. About 8 to 9 months after the application is filed, the search report and the patentability opinion are issued.
The examiner may raise objections of:
- lack of clarity, if the patent application is not sufficiently clear to be understood by a person skilled in the art;
- insufficiency of disclosure, if the application does not contain all the information necessary for a person skilled in the art to reproduce the invention;
- lack of novelty, if the patent application claims a technical solution already conceived and/or implemented by others or by the inventor/holder themselves;
- lack of inventive step, if the patent application claims a technical solution that is indeed new with respect to the state of the art, but whose differences are trivial, that is, the innovation is insufficient;
- lack of lawfulness, if the patent application claims a solution contrary to public policy or to morality.
It is possible to respond to the examiner's objections within 21 months of the filing date of the patent application. The response to the examiner consists of a technical brief to be filed with the Italian Patent and Trademark Office (UIBM).
When is the patent application published in Italy?
Patent applications are published by the Italian Patent and Trademark Office 18 months after the application is filed. Until that moment they remain secret, unless the holder requests early publication. In Italy, 30 days after the application is filed, only the bibliographic data are made public.
How long does it take for a patent to be granted in Italy?
Grant is subject to passing the examination by the Italian Patent and Trademark Office. The duration of the examination varies from case to case. If there is nothing preventing grant, this occurs on average within 2, at most 3 years from the filing of the patent application.
What fees must be paid?
If the patent application is filed electronically, the filing fee is EUR 50.00. If the patent application is filed on paper and the total number of pages is fewer than 10, the filing fee is EUR 120.00.
If the patent application is filed on paper and the total number of pages is more than 10 but fewer than 20, the filing fee is EUR 160.00. If the patent application is filed on paper and the total number of pages is more than 20 but fewer than 50, the filing fee is EUR 400.00.
If the patent application is filed on paper and the total number of pages is more than 50, the filing fee is EUR 600.00. In any case, for each claim beyond the tenth, a fee of EUR 45.00 is due.
Fees to keep the patent in force beyond the fourth year (in Euro)
- fifth year 60
- sixth year 90
- seventh year 120
- eighth year 170
- ninth year 200
- tenth year 230
- eleventh year 310
- twelfth year 410
- thirteenth year 530
- fourteenth year 600
- fifteenth year (and following up to the 20th) 650
Is it compulsory to be represented by a patent attorney registered with the relevant professional Register?
No, it is not compulsory, but it is strongly advisable.
Can the Italian patent application be extended abroad?
Yes, it can be extended to other countries, by priority, within 12 months of the filing date in Italy.
Can the patent application and the patent be assigned or licensed?
Yes, by means of private deeds that can be recorded with the Italian Patent and Trademark Office (UIBM).
Can the patent be entered on the balance sheet?
Yes, like all industrial property titles, as an intangible asset of the company.
Must the patent necessarily be registered in the name of a company?
No, in general it can be registered in the name of one or more natural persons and/or legal persons.
How long does a patent last in Italy?
The maximum duration of patents in Italy is 20 years from the filing date of the relevant application. At the end of the fourth year from filing, in order to keep the patent in force, an annual fee is required for the years from the fifth to the twentieth.
