In addition to the novelty, are there other substantial requirements for obtaining the patent?
– in order to be patented, the invention must not only be new, but shall not be obvious way to a skilled in the art. Therefore, trivial or, foreseeable modifications of what is already known are not patentable.
– Moreover, the invention shall be disclosed in the patent application in a sufficiently clear and complete manner for it to be carried out by the person skilled in the art on the basis of his technical knowledge and the content of the patent application. Therefore, a patent application which deliberately omits essential elements for the reproduction of the invention will result in a null patent.
To prevent loss of rights due to disclosure of the invention, should I file the patent application in all the countries of interest before disclosign my invention?
No, it is sufficient to filing a first national application for example in Italy.
Subsequently filed patent applications can enjoy a right of “priority” from the first filed application, provided they are filed within the anniversary of the first filing. The right of priority has the effect that the date of priority counts as the filing date of the later application, such that intermediate disclosures are not detrimental to novelty of the invention.
Is it appropriate to evaluate the commercial impact and market response to an innovative product before starting the patenting procedure?
Absolutely not, since one of the essential requirements for obtaining a valid patent is that the invention is new, i.e., that it has not been disclosed before the filing date of the patent application. The presentation of a new product on the market leads to the absence of the novelty requirement and therefore invalidates any patent obtained on an application filed after disclosure.
Is there a “world patent”?
There is no world patent, but only the possibility of obtaining national protection or protection for a group of states, possibly through the use of one of the international conventions that simplify and to a certain extent centralize the patenting procedures.
The so-called international patent application does not result in the grant of an international patent, but merely centralizes and unifies some phases of the patenting procedure, with a considerable reduction in costs and simplification of the patenting process.
The European patent is currently the most advanced form of “integration” of the patenting procedures, as it allows for the granting of a single patent which can be recognized in all the countries adhering to the European Patent Convention. Nevertheless, once granted the European Patent converts into a set of national patents, one for each contracting State.
The Community Patent Regulation provides for the granting of a unitary patent having effect throughout the European Union. This Regulation has not yet entered into force and at the moment it is not possible to request and obtain a unitary patent valid for the entire European Union or part thereof.
Does the patent have a duration? Can it be renewed once it has expired?
The patent has a time duration which in Italy (and in most foreign countries) is twenty years from the filing date. Once this legal monopoly term has elapsed, the patent can no longer be renewed.
What is the function of the patent?
From the owner’s point of view, the function of the patent is to confer the exclusive right to exploit the invention protected by the patent. From a public interest point of view, the patent system aims to stimulate research and dissemination of its results in exchange for a temporally limited monopoly right.
Are the procedures for registering a design different from those for the patent protection of an invention?
The procedures are substantially different, and the criterion used to define the scope of protection of an invention and a design is also different.
The latter is protected by recording the reproductions of the design. It is recommended, in order to obtain a greater scope of protection, to proceed with multiple registrations, also protecting variants of a basic design.
Is it possible to patent a new design?
The design is protected through the registration of a design.
Protection can be obtained nationally or through a community registration. There is also an international model convention, which covers some European and non-European countries.
Is software patentable?
The laws in force prohibit patent protection of software “as such”, that is, of the code or program in itself. Certain methods or procedures of an intellectual or abstract nature are also excluded from patenting, in particular: discoveries, scientific theories mathematical methods and methods for intellectual acts, playing games or doing business. However, these exclusions leave room for the protection of innovations that are implemented through or are practically implemented in software.
It is the task of the industrial property attorney to assess on a case-by-case basis whether the conditions for the protection of a discovery of this nature exist.
What are the legal instruments for enforcing a patent?
Although the Italian criminal code contains provisions against patent, design and trademark infringement, by far the most widely used tool is enforcement under civil law rules, through infringement proceedings. Interlocutory or precautionary measures (seizure, interlocutory injunction, descriptive seizure) can be used as a first step, followed by an action on the merits.
Obtaining precautionary measures is not always possible, since the requirements of the so-called “danger in delay” (“periculum in mora”) and the “prima facie case” (“fumus boni iuris”) must be met. at the discretion of the judge, who assesses the existence of the aforementioned requirements case by case.
What is the timeframe for obtaining a patent?
The times vary greatly depending on the type of patent applied for, the country in which the application is filed and also the type of strategy followed in the prosecution of the application. In case of need (imminent risk of infringement), measures can be taken to shorten the timing of the examination procedure. In some countries it is possible to obtain protection through a simple registration, without prior examination, with a substantial drastic reduction in the time required to obtain a registration.
In some countries, and in particular Italy, provisional protection is granted to the pending application. In Italy, legal action (including precautionary measures) can be initiated on the basis of a pending patent application
Is the patent issued after a substantial examination?
It depends on the national law.
Italian patent applications are searched prior to grant. The search is carried out by the European Patent Office. The search report, together with a reasoned written opinion on patentability are normally provided within 6-9 months of filing the patent application.
If the opinion of the European Patent Office is negative, in the sense that the application does not meet all the patentability requirements, the applicant must amend the application and / or present arguments in support of patentability of his invention. In the absence of this, the Italian Patent and Trademark Office rejects the application.
For this reason, it is particularly important that drafting of the patent application and subsequent prosecution are entrusted to qualified professionals.
If disclosing the invention prior to filing an application implies the loss of the right, how can the company make use of outside contractors, for instance, to solve specific problems that may arise in the design of a new product?
Through a non-disclosure agreement (NDA), which binds the third party to confidentialitysecrecy. The communication of information under NDA does not imply disclosure.
Does the patent have a limited territorial extension?
The patent confers the exclusive right limited to the territory for which it was applied for and granted.
In the territory for which the patent was granted, it confers an exclusive right that allows third parties to prevent any act of economic exploitation of the invention, including the importation of items manufactured in territories not covered by the patent.
What are the costs of obtaining a patent?
The costs of the patenting procedure depend substantially on the type of creation or innovation that you want to protect, as well as on the territorial extension of the protection you want to obtain. In general, however, these costs represent a small part of the total costs for the development of innovative products, and also with respect to the costs for the marketing of the products themselves, such as advertising costs in particular.In fact, the patenting procedure is only one phase of the complex process of conception, design, production and sale of a new product.
Costs increase with the increase in the territorial extension of protection and also, obviously, with the number of patents necessary to adequately protect, for example, various aspects of a machine or a complex plant. However, international conventions (in particular the so-called Patent Cooperation Treaty, as well as the European Patent Convention and other international conventions) make it possible to reduce the initial costs of patenting and therefore the risks associated with a commercial failure of the product or even with the possible impossibility of obtaining adequate protection due to the lack of novelty and inventive ste requirements.
An industrial property attorney with adequate experience in filing and prosecuting patent applications abroad is able to advise the company on the strategy that optimizes costs and benefits.