Patent protection and filing
Anticipating needs in an increasingly competitive and specialized market is the strategy behind entrepreneurial success. But ingenuity and innovation are not enough to emerge and, more importantly, win. Protection is a key step.
A unique product or manufacturing method that can offer solutions and answers in the marketplace in a new, unprecedented way meets the requirements for patentability.
A patent is the only tool that allows you to protect your invention and be able to defend yourself against infringement.
In addition, patenting offers many other benefits that are not always perceivable. For example, it allows one to record the value of one’s innovative capacity on the balance sheet, supporting the company’s credibility when applying for credit or during extraordinary financial transactions.
In terms of reputation, the patent also returns the advantage of being able to communicate the conception and realization of a new technology recognized, for all legal purposes, as protected. The patent is a source of enhancement of innovation that can materialize in revenues generated by exclusive or non-exclusive licenses which can be granted to third parties.
But before filing, it is necessary to verify that someone has not already protected or implemented this solution. Therefore, it is important to define in which countries you want to operate; the patent, where granted and recognized, guarantees exclusivity and an unparalleled economic and competitive advantage. However, it is important to emphasize that only in the chosen countries will it be possible to advance a claim on the innovation formalized by the patent filing.
Before filing a patent application, it is important to verify that someone else has not already done so.
This is not a mandatory procedure but strongly recommended to assess that the features of the invention meet the criteria for patentability: novelty, originality, solving a technical problem in the industrial field.
The Italian Patent and Trademark Office (UIBM) within 9 months of the filing of the application provides, free of charge, a Search Report and a Patentability Opinion (Written Opinion) prepared by the European Patent Office (EPO European Patent Office).
This Search Report consists of a worldwide search of patent and non-patent documents published prior to the filing date of the application concerning the same field.
For Italy, the UIBM, relying on the Patentability Opinion issued by the EPO, may eventually require the applicant to amend the claims so as to meet the patentability requirements (novelty and originality), and arrive at the grant of the Italian Patent. Otherwise, the application is rejected.
The EPO’s Patentability Opinion is also important in deciding whether and in which countries of interest to extend the Italian application abroad, since the EPO’s opinion generally indicates a likelihood of success for other countries as well.
It grants exclusive rights to 38 countries that are parties to the European Patent Convention. The states party to the Convention are all those that are part of the EU, in addition to Switzerland and Turkey. The examination and granting procedure is unique and centralized in Munich. Once a patent has been obtained, in order to enforce one’s rights in the different areas of interest, it must be “validated” in each country, within three months of the publication of the grant, by paying the prescribed official fees and filing a translation into the official local language where required. There are also annual maintenance fees for the European application and subsequent national validations.
This allows a single application to be filed at the International Patent Office for all states (152) that are parties to the Patent Cooperation Treaty (PCT)* and to reserve the right to then proceed with subsequent filing of the application in the individual states chosen, without losing priority rights. PCT is improperly called a “patent”: it does not in fact give rise to a patent title, but allows the application to be moved to the states of interest up to 30 months after the Italian priority date.
This is a particularly advantageous procedure for the applicant as it allows him/her to obtain a high-quality Search Report as well as to take advantage of sufficient time to evaluate it and possibly request a further patentability opinion with a specific examination (“Demand”). All this allows the applicant to take advantage of an extended time frame (30 months) to evaluate the invention’s market opportunities, without losing the right to claim exclusivity in countries of real interest.