A patent can be defined as:
“the exclusive right, guaranteed by law, to produce, sell or otherwise draw economic advantage from a new product or from a new process for a limited period of time”.
The object of the patent, to be valid, must meet determined conditions:
- Suitability for industrial application
The holder of a patent has exclusive rights on the invention both with regard to production and to market the production in which it is embodied.
The inventor has the inalienable right to be nominated as such, whereas the ownership of the invention can be held by natural persons or by a company.
The inventor or inventors are exclusively natural persons.
The exclusive rights are territorial, i.e. relating to the territory of the country or of the countries where the patent is filed and maintained alive. The patent is a temporary exclusive right, i.e. it has limited duration, starting from the filing date of the application: it lasts 20 years at most, with the payment of the annual maintenance fees (annuities) and may not be renewed once the period of validity has expired.
The Patent is the right instrument to protect your innovation and defend yourself effectively against those who try to copy it.
The patent allows to recognise the value of your capacity for innovation in your balance sheet, supporting the credibility of the company when its seeks credit or in the course of extraordinary finance operations.
The patent is also perfect for communicating to third parties, customers, suppliers and the market that the company is able to produce new technology and that its products are innovative and well protected.
The patent is a source of valorisation of innovation that can lead to revenues generated by licences, exclusive or otherwise, that can be granted to third parties.
Before any disclosure to third parties, by any means.
Therefore, the innovation must not be presented at conferences or trade shows or sold if you want to patent it validly.
The reason is that it would lose its absolute novelty requirement that must be met as of the filing date of the patent application.
The choice of the areas of the world where the patent is to be obtained is a sensitive and strategic one, since the rights on the innovation in question will be valid only in the selected countries. In the areas not protected by a patent, someone else may legally produce and sell the innovation without violating any law. For this reason, we recommend protecting the patent in all geographic areas where the patented object may be sold or produced. To obtain such a broad protection, several paths are available, through the following procedures:
- Patent for industrial invention
The concept of “invention” means “a new and original solution of a technical problem”.
Objects, products, machines, parts thereof, fabrication methods may be patented, provided they have novelty, originality, suitability for industrial application and lawfulness, i.e. they are not contrary to public order or morality.
A patent for industrial invention is valid for up to twenty years starting from the filing date of the patent application, provided the annual maintenance fees are paid.
- Patent for utility model
The utility model is an exclusive title relating to a modification improving an existing object (not a method). With this modification, the utility or ease of utilisation of the product is improved.
A utility model is valid for up to ten years starting from the filing date of the model application, provided the maintenance fees are paid at the expiration of the first five year period.
Utility models in Italy, and in the other Countries where they exist, are granted without substantial examination: therefore, it is easier to obtain, but the protection has shorter duration.
- Italian Patent: Deposit, Search Report and Granting
The Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi, UIBM) within 9 months from the filing date of the Italian application provides, free of charge, a Search Report and a Patentability Opinion (Written Opinion) prepared by the European Patent Office (EPO).
Tale rapporto di Ricerca consiste in una ricerca a livello mondiale su documenti brevettuali e non, pubblicati anteriormente alla data di deposito della domanda di brevetto e riguardanti lo stesso ambito. The Search Report consists of a worldwide search on documents, whether patent-related or otherwise, published before the filing date of the patent application and relating to the same field. For Italy, the UIBM, based on the Patentability Opinion issued by the EPO, may require the applicant to modify the claims in order to meet the patentability requirements (novelty and inventive step) and obtain the grant of the Italian Patent. Otherwise, the Italian application is rejected.
The Patentability Opinion of the EPO is also important to decide whether, and in which countries of interest, to extend the Italian application abroad, since the opinion of the EPO is generally an indicator of the probability of success for other Countries as well.
- WHAT IS A EUROPEAN PATENT
A European Patent is an exclusive right that covers as many as 38 countries that have adhered to the European Patent Convention. The States adhering to the Convention are all of the EU member states, plus Switzerland and Turkey. There is a single examination and granting procedure, centralised in Munich; the advantage of having a single application, examination and granting procedure is readily apparent.
Once the patent is granted, to enforce your rights in the countries of interest, it is necessary to “validate it” in each country, paying the prescribed official fees and filing the translation in the official local language, if required in that country.
Annual maintenance fees are required for the European application and the subsequent national validations.
- EUROPEAN FILING AND SEARCH REPORT
A European patent application is filed with the European Patent Office (EPO), headquartered in Munich.
The application is subjected to a formal examination and then assigned to the research Division for the research on novelty, inventive step and industrial applicability.
The Division prepares a Search Report, indicating which documents (patents or scientific papers) were selected and whether they anticipate one or more of the claims of the filed application. The Search Report is accompanied by a written opinion, in which the novelty, the inventive step and the industrial applicability of the European patent application are assessed.
However, it should be pointed out that the content of the Search Report and the written opinion (Patentability Opinion - Written Opinion) must be carefully checked with the assistance of an experienced advisor.
Knowledge of the patents published prior to the filing date often leads to identifying a narrower scope of the protection initially requested. In other words, it is essential to define the real invention that emerges after knowledge of the prior patents: in this case, the assistance of an experienced advisor helps in identifying what content the granted patent may have, if it is subjected to the examination.
If the decision to proceed is made, the applicant and the examiner start a written dialogue; sometimes, the protection requested initially may be narrowed, depending on the documents emerged or on the examiner’s objections. The examination can lead to the rejection of the European application, if the examiner finds prior patents that substantially anticipate the proposed invention, or to the grant of the European Patent.
- GRANTING AND VALIDATION OF THE EUROPEAN PATENT
If the examination of the European application ends favourably, the patent is granted and the European Office publishes its text.
Within three months from the publication of the grant, the patent must be validated in the designated countries at the time of the application or in some of them, at the holder’s discretion.
In many States, it is necessary to file, in full or in part , the translation of the text of the patent granted; otherwise, the European patent application is deemed abandoned for that State.
Recently, with the so-called “London Agreement”, granted patents are validated in some States (including Great Britain, France, Germany, Switzerland, Liechtenstein and Luxembourg) with no need to translated the granted text.
For other countries, it is possible to file only the translation of the claims in the national language (for example, Slovenia, Latvia, Denmark, Sweden, Netherlands and Iceland) within three months from the date of the grant. Thus, the costs of the European Patent are significantly reduced. To date, Italy and Spain require translation of the entire text of the granted patent.
- MAINTENANCE OF THE EUROPEAN PATENT
To maintain the exclusive rights of a granted European Patent, in the States where it was validated, it is necessary to pay the annual maintenance fees (as is the case for the Italian Patent).
If the holder of the Patent is no longer interested in maintaining it alive in one or more States, it is sufficient to cease paying the annual fees. In this case, the European Patent will lapse in the country where it was abandoned. This choice is irreversible and therefore it must be considered carefully.
The following map shows the states adhering to the revised European Patent Convention.
It is also possible to extent the European Patent in countries called EXTENSION STATES and in the VALIDATION STATES
International Patent (application filed under the PCT “Patent Cooperation Treaty”)
- WHAT IS AN INTERNATIONAL PATENT
If Italian companies are interested in protecting their inventions in multiple countries, we recommend filing first an Italian Patent application, followed by an International Patent application which covers up to 146 countries, provided that the patent is filed in the Countries of interest no later than 30 months from the Italian filing date.
An international patent makes it possible to file with the International Patent Office a single patent application for all (152) States adhering to the PCT (Patent Cooperation Treaty) Convention at the time of filing and to reserve the right to subsequently file the application in the selected individual States, without losing priority rights.
The PCT international patent is improperly called “patent” because it does not originate a patent title, but it allows to mode the filing of the application in the states of interest up to 30 months from the Italian priority date.
- THE FILING AND REGISTRATION PROCEDURE
International patents make it possible to “reserve” patent applications in many States, reserving the right to proceed with them no later than thirty months from the first Italian filing.
Within the nineteenth month, an International Search Report is obtained, with which the actual possibility of obtaining the patent can be assessed. It is a complex assessment, which should be carried out with the assistance of a competent advisor.
The applicant may decide whether or not to proceed with the international application, considering above all how to amend the claims to overcome any obstacles that may arise from the documents indicated in the Search Report.
Alternatively, the PCT examining authority can be asked to provide an additional patentability opinion (“Written Opinion”) that is given within the thirtieth month, starting from the date of first filing, requesting a dedicated merit examination.
In this way, the significant expense to be incurred for the subsequent national phases, in each of the States selected by the patent holder, can be incurred with better awareness of the possibility of success.
Upon entering into the national or regional phases (for example, the European Patent phase, which adheres to the PCT convention and that in this case is considered a regional patent), each patent will be examined and granted, if the outcome of the examination is favourable.
From this moment on, then, the PCT international patent is transformed into a series of national or regional patents, each of which will have its own process and life cycle.
To obtain patent protection in countries that are not members of the PCT, individual direct national filings are necessary.
- THE ADVANTAGES OF THE PCT FILING
The procedure of the PCT patent is particularly advantageous for the applicant, because he obtains a high quality Search Report, sufficient time to assess it and possibly to request an additional patentability opinion with a specific examination (“Demand”).
All this allows the applicant to take a long time interval (30 months) to assess the market opportunities of the invention, without losing the right to claim exclusive protection in the countries of real interest.
The list (the map?) of the States adhering to the PCT (Patent Cooperation Treaty) International Convention.
«All signs susceptible to be represented graphically may be registered as trademarks, in particular words, including names of persons, drawings, letters, numerals, sounds, the shape of the product or its package, colour combinations or hues, provided they are able to distinguish the products or services of a company from those of other companies». (Article 7 of the Italian Industrial Property Code= Article 4 of RMC previous Vers.)
In Italy, the registration Agency is the Italian Patent and Trademark office (Ufficio Italiano Brevetti e Marchi, UIBM).
A trademark is valid for ten years from the filing date and it can be renewed at each expiration date. Its duration is thus virtually infinite.
The registration of a Trademark grants its holder the right to make exclusive use of the registered sign for claimed products or services.
He may not prevent competitors from using a sign that is identical or similar to the one he claimed in the registration application.
Registering a Trademark makes it possible to be distinguished from competitors and to protect it against possible infringers.
Moreover, a registered Trademark is an intangible asset that can be recognised as such in the balance sheet.
The Trademark can also be licenced or sold to third parties, thus becoming a source of income.
The registered trademark makes it possible to activate not only civil proceedings but also criminal proceedings against infringement, unlike unregistered trademarks.
By registering a trademark, lastly, it is possible to request and obtain that products bearing counterfeit trademarks be held at customs.
A trademark may be registered at any time, provided it has the necessary requirements.
The sooner it is deposited, the easier it is to prevent the risk that someone else has already deposited a trademark that is similar or identical for the same category of goods, preventing the lawful holder from enforcing his rights.
The trademark is registered with reference to specific products or services (International Classification).
This allows the possible coexistence of identical or similar trademarks in the same Countries, which, however, refer to completely different products in the same State.
The trademark is territorial, i.e. it is only valid in the Countries where it is registered. For this reason, we recommend protecting your trademark with registration in all Countries of commercial interest, before starting sales in these markets.
For a company, it is important to defend its trademarks constantly. That is why Studio Bonini offers a watch service: the holders of a Trademark are promptly informed of the publication of trademarks that are identical or similar to their own.
It is not an investigation service on the territory or on the web (these are useful to unearth infringers, but they are more expensive).
Instead, it involves monitoring the publications in the national trademark bulletins of individual Countries and of supranational offices.
This service makes it possible to immediately identify attempts to register trademarks similar to the holder’s, in order to file an opposition to block the registration of a conflicting trademark.
A registration opposition is an administrative, not judicial, proceeding, allowed within a limited time interval, set by the National Offices (generally 2-3 months from publication).
These trademarks are often filed by foreign agents of the company or by dishonest competitors to misappropriate the merits of another’s trademark.
This procedure allows for considerable money savings, because the cancellation of a Trademark, after registration, is far more expensive and it usually occurs with a civil lawsuit.
A trademark registered in Italy gives its holder the right to make exclusive use starting from the filing date and it is confirmed with registration.
An Italian trademark is valid for 10 years from the filing date and it may be renewed indefinitely by paying the renewal fee at the expiration of each ten-year time interval.
- EFFECTS OF REGISTRATION
The holder of a registered Trademark can enforce his exclusive rights against the use of identical or similar Trademarks, for products or services identical or similar to the registered ones.
Protection can be activated both with a civil and with a criminal action.
If another party has started using an identical or similar trademark (prior use), for identical or similar products or services before the filing date of the applicant, a coexistence situation can be determined: the prior user may continue to use it but only in the territory where it was using it before the filing date of the applicant. If this use is merely local and has not generated renown (significant knowledge) in the reference audience, the applicant may legitimately obtain registration.The registration certificate has the advantage of being presumed valid until proven otherwise and it grants protection throughout the national territory.
The defence of a trademark (description, seizure, injunction, infringement lawsuit) can be initiated after filing the trademark (requesting the accelerated examination from the UIBM in the course of the proceedings).
The European Union trademark allows to obtain, with a single procedure and the payment of a single fee, a title valid for all 28 Countries of the European Union.
The holder of a European Union trademark has the right to make exclusive use of the registered trademark.
He may prohibit others from using a sign that is identical or similar to the one registered for products identical or similar to the claimed ones.
The protection of the European Union trademark lasts 10 years from the filing date of the application and it can be renew indefinitely at the expiration of each ten-year period.
- THE ADVANTAGES OFA EUROPEAN UNION TRADEMARK
- It may prevent the registration and subsequent use in the European Union of EU or national trademarks that are identical or similar to the filed trademark, for identical or similar products;
- It is the first step for those envisioning an expansion of their commercial activity in other European Union Countries in addition to Italy.
- REGISTARTION PROCEDURE
The procedure for the registration of the European Union trademark takes place at the European Union Intellectual Property Office (EUIPO), headquartered in Alicante, Spain.Upon receiving the application, the EUIPO carries out a search only among prior identical or similar EU trademarks, and informs the holders of the trademarks cited in the search report, that the new European Union trademark application will be published.The EUIPO conducts a single examination to verify, according to regulations, whether the filed trademark may be registered.
If the filed trademark does not pass the merit examination, the EUIPO issues as notice of registration rejection, to which it is possible to reply with justifying reasons.
If the reasons are not accepted, the rejection becomes definitive and the application is denied.
If the rejection is revoked, or if it is not issued at all, the trademark is allowed for publication of the application on the European Union Trademark Bulletin.
Within 3 months from the publication, the holders of prior identical or similar trademarks, filed or registered in European Union Countries, may file an opposition to the registration of the European Union trademark application.
In the absence of opposition, or if it is resolved with a settlement between the parties, or by the favourable decision of the Office, the EUIPO registers the European Union trademark for the requested products, issuing the registration certificate.
Within the EUIPO, there is an Appeal Commission, before which appeals can be filed against decisions on the examination of a European Union trademark, against oppositions or against the applications for cancellation of a European Union Trademark.
The decisions issued by the Appeal Commission can be impugned in the third or fourth degree before the General Court and the European Court of Justice in Luxembourg.
The International Trademark (Madrid Protocol) allows an Italian or European Union registration application to be extended to other foreign Countries.
The Madrid Protocol was adopted by over 100 Countries in the five continents.
Protection may be obtained in some or all these Countries with a single application.
The cost of the international trademark is variable according to the designated States and to their individual fee.
The International Trademark is valid for 10 years from the international registration date and it can be renewed indefinitely, paying the renewal fees at the expiration of the ten-year time interval.
Renewal may be total or partial, i.e. protection may be renewed only for some of the States selected before, or the list of products or services to be protected may be limited.
- INTERNATIONAL TRADEMARK FILING AND REGISTRATION PROCEDURE
To deposit an International Trademark application, the applicant must have already filed an application for the registration of a National Trademark.
The applicant may thus use, as a basis, a national trademark application or registration to extend it with the International Trademark
Alternatively, if the applicant already has an application, or better yet a European Union trademark registration, he may base its foreign extension on it: the European Union Intellectual Property Office adheres to the Madrid Protocol as a “regional” Office.
The International Trademark is managed by the WIPO (World Intellectual Property Organization), which attributes a registration date to the application and publishes it in its own Bulletin, issuing a registration certificate to the applicant.
- EXAMINATION BY THE DESIGNATED OFFICES
The Offices of the States designated by an International Trademark, within 18 months from notification, which they receive from the WIPO, may issue a provisional refusal to register the trademark, which is usually caused:
- by the existence of an identical or similar national trademark, registered for products that are similar to all or to some of the claimed products;
- by factors that absolutely preclude registration (descriptiveness, lack of distinctiveness, etcetera) or by other irregularities, e.g. in the specification of the claimed products or services;
- by third party opposition to the grant;
If the refusal is fully or partly overcome, the trademark is granted for all or some of the products requested.
Otherwise, the refusal become definitive and the trademark protection may be rejected in its entirety or in part in one or more of the designated States.
Moreover, the Offices of the designated States must issue, within 18 months of the WIPO notice, a communication whereby, in the absence of objections, the trademark shall be understood to be granted definitively for 10 years.
It is important to point out that, if one or more States refuse to register the International Trademark, it remains effective in the other designated States, where no objections were filed.
Below is the list of the Countries belonging to the Madrid System (Madrid Protocol):
|Nuova Zelanda||Filippine||Corea del Nord||Mongolia||Vietnam||Giappone|
|Corea del Sud||Turkmenistan||Bhutan||Iran||Siria||Australia/td>|
|Namibia||Botswana||Madagascar||São Tomé e Príncipe||Tunisia|
|Stati Uniti||Cuba||Colombia||Curaçao||Antigua e Barbuda||Messico|
«The appearance of the entire product or of a part thereof as it is defined, in particular, by the characteristics of the lines, of the contours, of the colours, of the shape, of the surface texture or of the materials of the product itself or of its ornament may be registered as designs and models, provided that they are new and have individual charactere».(Article 31 of the Italian Industrial Property Code = Article 3, RDC).
In the field of intellectual property, the term “design” is erroneously used to identify every product with a particular aesthetic characterisation. Actually, in the current regulation design is construed as “an object of industrial production”.
Properly, the term “design” is translated into Italian with the word “disegno” (drawing) if it is two-dimensional (e.g., a fabric ornament motif) and with the word “modello”, if it is three-dimensional (e.g. the shape of a chair).
The design or model has to be new and original, i.e. different from other designs already known as a result of official publication or prior disclosure (for example, in an exhibition, in a trade show, in advertising, even without being registered) and it has to lack functional values.
The design or model must have individual character, i.e. it must elicit an impression that is comprehensively different from the other shapes already known to the informed user.
In Italy and in the European Union, protection of the Design lasts up to 25 years starting from the filing date.
Italian Design allows registering, with a single application, both a single product and a number of products from two to infinity (multiple application), provided they are homogeneous (belonging to the same class of the Locarno International Classification).
This characteristic constitutes a great advantage in terms of registration times and costs, especially for those who desire to protect entire collections.
With the registration of a model or industrial design, applicants intend to protect the appearance of a product or a part thereof, which is the result of the lines, contours, colours, shape, surface texture, materials constituting the product itself; essentially, the overall visual impression of a product is protected.
The Italian design or model is valid for 5 years from the filing date and it is renewable for up to five periods (thus for no more than 25 years) paying the renewal fee and filing a specific application.
The requirements for the deposit of an Italian design or model are:
- NOVELTY: The model or design must not be identical to one that has already been published or disclosed;
- INDIVIDUAL CHARACTER: The model or design must not elicit an identical or similar impression, in an informed user, to another design or model already known as a result of publication or disclosure.
- CHARACTERISTICS OF THE MULTIPLE ITALIAN DESIGN
- With a single application for Italian model or design, it is possible to protect (multiple filing) from one to an unlimited number of objects, provided they belong to the same class of products, defined by the Locarno International Classification.
- The cost of an application for multiple Italian model or design is fixed, regardless of the number of models filed, so it is particularly advantageous.
- The registration application for Italian model or design is normally accessible to the public from its filing date; however, the applicant can request that publication be deferred, i.e. that public access be delayed for up to 30 months.
- If the holder does not want to maintain the protection, it is sufficient to cease paying the renewal fee at the end of the five-year time interval to let the design lapse.
- PROTECTION OF THE ITALIAN DESIGN OR MODEL
Protection is territorial: if the Design was not extended to other foreign Countries, the protection and safeguard of the design or model remains limited to Italy.
The holder of an Italian design or model has the right to make exclusive use of the model or design and may prevent others from producing or marketing an identical or similar model or design in Italy.
The EU model or EU design is a single exclusive title, valid throughout the European Union.
Filing, publication and registration are managed by the European Union Intellectual Property Office (EUIPO) of Alicante in Spain, after a formal and administrative examination (not on the novelty requirements).
Currently, the administrative examination procedure ends with the grant in approximately 2 days.
The protection of the registered EU Design or Model lasts up to a 25 years, starting from the filing date of the application, provided the renewal fees are paid every 5 years.
It is possible to file, with a single application, more than one model or design, paying decreasing additional fees with respect to the one for the first model, for each additional design, provided all models belong to the same Locarno International Classification and hence they are homogeneous by type.
- THE REQUIREMENTS OF THE EU DESIGN
The EU model or design must meet two fundamental requirements:
- Individual character (originality)
- The filed EU model must not be identical, or different in irrelevant details from other models, already presented to the public (by official publication or disclosure in trade shows, exhibitions, etc.) as of the filing date of the application to register the model, or the priority date if claimed.
- THE ADVANTAGES OF THE EU DESIGN
The EU model or design has four fundamental advantages:
- A single examination and publication for all European Union Countries;
- A single payment of fees for all States;
- Uniform protection in all States;
- The so-called “grace year”, i.e., the author of the design, or his assignee, is granted a period of 12 months, during which he may subject the model or models to the test of the market, before deciding whether or not to register one or more EU models.
This 12-month period allows the author to select models and invest in the registration of those forms that have met with consumers’ approval.
- However, the grace year is also a risk, if a competitor registers an identical model before the lawful holder. The latter can always invalidate it due to lack of novelty, but in the meantime the competitor’s title is presumed to be valid and it prevents the lawful holder from marketing his own design. Should the design be definitively invalidated, after a year has elapsed, the lawful holder may no longer register it validly
The list of the Countries where an EU Design or Model can be registered is as follows:
The International Model may be registered by filing with the WIPO (World Intellectual Property Organization), headquartered in Geneva, and it may provide protection in multiple States with a single application.
- FILING AND REGISTRATION PROCEDURE
From 1 to 100 models can be filed, provided they belong to the same international class, i.e. homogeneous products, for example all jewellery products, all ceramic products, etc.
The total cost of the international model depends on many factors, including the number of designated States, publication in black and white or colour, the number of views for each design and the number of models to be protected.
The Countries where an International Model can be registered, according to the Geneva Act, are as follows
|Rep.di Macedonia||Repubblica Coreana||Romania||Rwanda||São Tomé e Príncipe|
Copyright is recognised in all major Countries in the world without any need for additional registration formalities for each State (as is the case for example for Patents, Trademarks or Designs).
It protects the products of human ingenuity
- That belong to literature;
- That belong to music;
- That belong to figurative arts, to architecture;
- That belong to the theatre or to cinematography;
- Computer programs and databases are also protected;
- Industrial design works having
- creative character and artistic values are protected.
The economic utilisation rights that originally belong to the author may be transferred to third parties. If the author is an employee and the creation took place in the course of his work, the rights belong to the employer, while the Author has the exclusive right of being recognised as such, irrespective of who uses the work.
To date, copyright is also the main software protection instrument.
For Italian law, an industrial model, for example a jewel, a ceramic article, a lamp, can benefit from double protection, i.e. from registration as a Design model or from recognition as Copyright.
In general, Italian law allows double protection both as design and as copyright to all “industrial design works having creative character and artistic value”. It will thus be possible to protect some objects through both instruments, obtaining from the copyright the advantage of a universal protection (immediately extended in all countries), as well as a recognition of the artistic value of one’s own work, and obtaining from the design a broader protection, able also to cover objects, which, while different in the details, provide a general impression that is equivalent to that of the protected model.