FAQ Patents

What is the length of the protection of a patent?

A patent for industrial inventions lasts 20 years from the filing date of the application and cannot be renewed.

What is the length of the protection of a utility model?

A utility model lasts 10 years from the date of submission of the application and cannot be renewed.

What can be patented?

It can be patented an invention that is new, inventive and have industrial applicability. In other words, your invention must not have been disclosed (by you or by others) prior to the filing of the patent application and must have non-obvious technical features that distinguish it from similar inventions.

Products, processes, methods, uses; compositions can be patented, provided that they meet the above mentioned requirements. Pursuant to Article 50 of the Italian Industrial Property Code (abbr. CPI), inventions whose implementation is contrary to public order and decency cannot be patented.

What can be the subject of a utility model?

It can be the subject of an utility model a solution that is new, has industrial applicability, and which has a functional shape conferring to the product a particular utility.

In which technical field it is possible to obtain a patent?

It is possible to file a patent application in any technical field (electronic, chemical, mechanical, food, organic), including agriculture.

In which territories is my patent valid?

The patent has a territorial protection, meaning that it provides protection against possible infringers in the territories in which it has been filed. The choice of a country is made primarily on the basis of your current business or on what can be useful in the future.

What can be done if the patent is counterfeited, for example, by my competitor?

The first thing to do is to make sure that the product protected with your patent is actually unlawfully counterfeited. If so, it is possible to carry out actions of formal notice informing the alleged infringer of the existence of your rights, intimating him to cease his unlawful activities, or inviting him to find a commercial agreement providing the signing of a license and/or the payment in your favor of royalties and the like. It is also possible to activate judicial means, establishing lawsuits or other legal actions.

What should I know before filing a patent application?

The basic requirements for filing of a patent application are that your invention shall be new, inventive and industrially applicable. Before proceeding with the drafting and filing of the patent application, it is appropriate to have an idea of the prior art in the world, in order to assess possible strengths and weaknesses of your invention, especially in terms of inventive step. In this regard, useful verification tools are the so-called prior art searches, targeted precisely to the discovery of publications or disclosures, which are useful for evaluating the “strength” of your invention.

What is the difference between the patent application and patent granted?

The “patent application” identifies your right from the filing date until the time of grant.

However, the term “granted patent”, refers to your right at the end of the granting procedure which may contemplate an examination phase in which the application may be subject to limitations and some changes. In any case, both the application and the granted patent give the owner the exclusive right on what has been claimed, which exclude unauthorized third parties to reproduce your invention.

What is the length of the granting procedure?

Usually it depends on the various jurisdictions and their respective competent Patent Offices. If the Patent Office carries out a substantive examination, the timing may be extended, depending on the severity of the objections and the technical time required by the competent authority. In some cases, it is possible to request an acceleration of the procedure, in order to shorten the timing and proceed as fast as possible, especially during the examination phase.

What kinds of tests / checks are carried out by the competent Patent Office during the granting process?

Depending on the territorial jurisdiction concerned, formal and / or substantive verifications can be carried out. As an example, an application for an Italian national patent is initially examined as for what concerns filing formalities and then, after some months from the filing date, a search report is issued, in which the Examiner (following a prior art search that he has performed consulting specialized database) delivers its first opinion of patentability, especially in terms of novelty and inventive step. These indications represent useful information in order to decide the future of your patent strategy. The Italian procedure then requires that the owner shall provide a written reply to any examiner’s objections, limiting, if the case, the claims, after which the UIBM generally proceed with the grant of the patent.

At European level a European patent application is subject both to a formal and a substantive examination. The Examiner will evaluate Your patent application and will then deliver a binding opinion. In case the latter is negative, it will be necessary to respond with all the eventual amendments until a positive communication is obtained. This will lead to the conclusion of the whole granting process.

Why should I go to an intellectual property consultancy firm whose professionals are qualified before the relevant Patent Office?

The granting of a patent application may be in some cases a very complicated technical-legal proceeding, which requires specific skills in both technical and legal matters. Our consultants are all qualified as authorized European and Italian Patent Attorneys with years of experience, enrolled in the professional registers and certified after having passed national and European qualifying examination (some of them have also been examiners at the European Patent Office).

They are therefore able to assist you in the procedures for granting in all the technical areas and with the necessary knowledge in the legal field.

How does the filing in foreign territories work, for example in China or the U.S.?

For domestic filings in territories outside of Italy or the European Union, we can rely on the assistance of our trusted correspondents who have been working with us from several years, thus basically covering all of the countries of interest.

How much does patenting cost?

The question to ask should not be “how much” but “how much could it cost” to the company (in terms of turnover, image, market etc.) if a patent is not filed.

In fact, an inventive idea placed on the market without the proper protection inevitably results in an “assist” for the competition, which will exploit the absence of protection, to claim a product or an invention to be of its own whereas it has been actually generated from you!