INDUSTRIAL INVENTIONS IN ITALY

Abstract

1. In Italy, and in most countries, a patent of invention lasts at most 20 years, provided that the relative fees are paid annually to maintain the patent; when the application is filed, in Italy, no yearly fees are paid. The first yearly fee due is the fifth.
2. The content of a patent application remains secret for 18 months. In Italy the Proprietor may request, when he files the application, that his application be made public, which happens after a minimum of 3 months from the filing date. The effects of a patent application come into force on the date on which the content thereof is made accessible, or notified, to third parties.
3. While the content of a patent application for an invention remains secret, it is not appropriate to communicate the inventive idea to third parties, unless certain precautions are taken.
4. The content of a patent application for an invention filed in Italy is protected provisionally in almost all the world for 12 months; after this, protection continues only in those countries where the patent application has actually been filed and becomes exclusive only when the patent is granted.       
   In those countries where an examination of merit is required, there are not only the filing fees and maintenance fees to be paid, but also the expenses for the examination procedure and the expenses to overcome any possible opposition to the final grant, which any third person can file wherever such an opposition is possible (for example, in European Patent procedures).
5. The inventive idea that characterizes an application for a patent of invention must not have been made public, for example by selling the relative product or even only proposing it for sale (in the event that the inventive idea is easily deduced from the product), before the application has been filed.The inventive idea can be the subject of trials and experiments, on condition that this is obviously so, even for those who are carrying out the trials and experiments, and that it is subject to confidentiality.
6. The inventive idea that characterizes an application for a patent of invention must not be a reproduction of something which is already present elsewhere, nor must it be a banal re-elaboration of what already exists.
7. The name of the actual inventor must always be given (whether he be employee, collaborator, professional or artisan), keeping in mind that according to certain contracts with the employer, the inventor may have the right to a “fair compensation” over and above his salary, or above the compensation agreed on for his work as designer or researcher.
8. When plans or prototypes are commissioned from third parties, it is necessary to define in the contract, clearly and in advance, who the proprietor of any inventive ideas will be, and how the inventive contribution of a third party will be regulated economically.
9. There is no search which gives absolute certainty, since they all have a certain level of certainty, a certain level of cover and a certain level of updating. One can be certain of the result only when one finds a prior document which is identical to the inventive idea which is to be verified (negative certainty). A prior international search is in fact a feasibility study.
10. In order to identify possible inventive ideas protected by third parties, it is possible to carry out searches in the name of the Proprietor, or the inventor, by country, by priority, or by subject.
11. It is possible to carry out continuous checks (surveillance) on specific subjects or on specific names, for example to monitor competitors or a particular sector.
12. It is advisable to extend the content of an application for a patent of invention only to those countries where it is thought that there might be a real economic interest to do so in the medium term, or where there are potential competitors, and to avoid those countries where in any case it is not economic to start a court case against third parties in infringement.
13. There are two points to consider in order to decide whether to proceed with a patent application. On the one hand, the expenses for a patent (filing, extension, obtaining and maintenance) should not be more than a percentage of the turnover which may be assumed to be obtained with the product which contains the inventive idea of the patent. This percentage depends on the gross profit which the product allows. On the other hand, a patent binds a certain technology to the proprietor, and therefore creates a barrier to prevent third parties from entering a market. Therefore, the decision as to whether to proceed with a patent application must certainly be financial, but sometimes, especially, strategic.
14. An application for a patent of invention can be extended abroad in the following ways:
• country by country (the national way),
• the way of the European patent (cf.) for member countries and, for non-members, the national way,
• the delaying PCT procedure (cf.) for member countries and, for non-member countries, the national way.
15. Before filing the content of an application for a patent of invention abroad, it is advisable to verify if the inventive idea described therein has undergone, in practice and in the meantime, any modifications or implementations, in order to adapt the patent application before it is extended.
16. At present, in Italy, an application for a patent of invention becomes a patent about 3/4 years after filing.
17. he content of an application for a patent and of a patent is defined by the content of the claims and particularly what is identified after the formula which is usually included, that is, “characterized in that” or an equivalent term. The content of a claim cannot be interpreted extensively, but has to be interpreted in the light of what the description and drawings identify to be the applicant’s intentions.
    It is only what is contained in the claims, and particularly in the independent claims, that can be used against third parties. A claim that does not contain the division “characterized in that”, or similar, must be integrally reproduced if there is to be infringement.                        Infringement occurs either when the content of an independent claim is reproduced practically literally, or when it is reproduced by equivalents.
18. The main claim, whether of method, of device and/or of product, must contain the so-called “bottle neck”, that is to say, that part of the inventive idea which constitutes the invention, and which the adverse party must necessarily adopt in order to obtain the same advantages add benefits.          
    The fewer things are included to define the “bottle neck”, the more difficult it will be to “get out of” the patent, that is to say, to manage to get round the inventive idea patented.         
    The more things are contained in the main claim (the so-called “shopping bag” main claim), the easier it will be to have the patent granted, but it will also be easier for third parties to get round the patent.
19. In order for the content of a claim to be validly opposed against third parties, the description must explain what function it performs and what contribution it makes to the inventive idea. When a dependent claim is used by a third party, but not the independent claim which supports and justifies the dependent claim, then there is no infringement.
20. The content of a prior art document used to evaluate the validity of a patent claim remains frozen at the date on which said prior document became available to the public, when it is compared for novelty; when it is compared with regard to inventive activity, however, it must be up-dated with the normal knowledge and experience which have been acquired in the meantime up to the priority date of the patent.
21. The content of an application for a patent may be assigned, that is to say, it may be licensed to third parties.
22. Software can be protected by a patent on condition that it is used for productive activity and as such it is the functions performed that are protected, not because of how it is written. The USA, Japan and a few other countries are particular cases.
23. With a patent it is possible to protect: the method; the machine or plant that embodies the method; the tools; the devices or whatever else is essential and univocally dedicated to the method; in certain case the use of the product obtained.
24. A method patent can protect the product obtained, the plant that uses said method, when it is made to function with said method, the machines, the essential devices or the strategies essential to carry out the method.