Patents

• What is a patent?

A patent is an exclusive right granted by a country to protect inventions, concerning products or processes, that offer a new technical solution or propose a new way of doing something, for a limited period of time, usually 20 years. In exchange for this limited monopoly, the patent holder must disclose the invention to the public, in the patent application. A patent is a territorial right and has its effect within the national boundaries of the country for which it was granted.
In order to obtain patent protection, inventors must file a patent application, as registration is a requirement for obtaining protection.

• What are the requirements for my idea to be patentable?

In order to be patentable as an industrial invention, the idea must materialize in the solution of a technical problem that has not yet been solved, it must be apt to be realizable in the industrial field, and such as to make an advance over the pre-existing technique and knowledge. A patentable industrial invention may relate to an apparatus, process, product, substance and/or a different use thereof.
Not patentable are:
discoveries, scientific theories and mathematical methods; plans, principles and methods for intellectual activities, for play or for commercial activities; and computer programs, presentations of information as such. This means that the practical application of a scientific discovery, for example, or software capable of generating a technical effect beyond the normal interactions between software and hardware is patentable.

Also not patentable are:
methods for surgical or therapeutic treatment of the human or animal body and methods of diagnosis applied to the human or animal body (but substances or mixtures of substances, compositions for the use and implementation of such methods are allowed to be patented); plant varieties and animal breeds and essentially biological processes for the production of animals or plants, including new plant varieties with respect to which the invention consists solely of the genetic modification of another plant variety, even if said modification is the result of a genetic engineering process animal breeds and essentially biological processes for obtaining them (however, it does not apply to microbiological processes and products obtained from such processes).

• Is it possible to patent an invention that has already been used and disclosed?

No, the invention must not be included in the “state of the art,” i.e., it must not have been made available to the public (in the form of publications, trade show exhibits, sales,…) prior to the filing date of the patent application and, of course, it must not have been the subject of other patent applications that have an earlier filing date.

• How long does the protection last for?

In almost every country in the world, the maximum duration is 20 years from filing! This duration can be extended only for patents in the pharmaceutical field by supplementary protection certificates.

• Does a patent application have worldwide protection?

A patent application is valid only in the territory of the state where the application is filed. In Italy, the filing can be made at the UIBM (Italian Patent and Trademark Office).
The interest in protecting one’s invention in a number of European states, as well as the presence of a prior examination, may make one inclined to file a European patent application, which can be made at the EPO (European Patent Office), based in Munich.
If there is a need to file a patent application in many states even outside Europe, one can make use of the international PCT (Patent Cooperation Treaty) application, which provides a simpler and cheaper procedure for filing an application for protection in more than one country (as of today, more than 140 states worldwide adhere).

• What is the difference between a patent and a utility model?

The two types of protection confer exactly the same rights, but there is a difference in duration between a patent for invention (20 years) and a utility model (10 years).

• What is the difference between the inventor, the applicant and the owner of a patent?

The inventor is the creator of the invention. In general, to be considered an inventor, some contribution to the development of the creative elements of an invention (technical creativity) is required. Inventors are always private parties and always have the right to be designated in the patent, regardless of who files the application. Joint inventors or co-inventors exist when a patentable invention is the result of the inventive work of more than one inventor, even if they did not contribute equal parts.
According to the European Patent Convention (EPC), to which all EU member states are signatories, in principle the inventor, or his successor, has the right to a patent. In practice, the person who applies for a patent is presumed to be the inventor, so that the inventor and the applicant usually coincide. In many jurisdictions, however, the applicant will not necessarily be the inventor-for example, in cases where ownership of the invention has been contractually assigned to another party-although the inventor will always retain the right to be named as such in the application. This largely depends on national law, although the EPC regulates this issue in general terms. In particular, in many countries there are specific laws on employee inventions and inventions made at universities that can result in special arrangements in relation to the right to patent. For example, it is very common that, in the context of an employment relationship, rights to inventions created by employees are assigned to the employer by the employment contract or are considered to belong to the employer by law. In such a case, the applicant (i.e., the future owner of the patent) is not the inventor.

Finally, ownership is a right granted to the patent applicant after the patent has been granted. Like any property right, ownership of a patent can be transferred (even while it is still in the application state).

Trademarks

• What is a trademark?

Trademarks are distinctive signs used in commerce to identify products and services. More specifically, a trademark is a symbol that your customers use to recognize you or recognize your products over your competitors. It may consist of any signs that can be reproduced graphically, especially words, including names of persons, drawings, letters, numerals, the shape of the product or its packaging, provided that such signs are suitable for distinguishing your goods or services from those of other businesses..

• How can trademarks be protected?

Trademarks can be protected through registration.
Registering a trademark protects the value of the mark, defends it against rival marks, defines the rights of the owner, and prevents counterfeiting and fraud.

In many countries, so-called well-known trademarks are protected even without being registered, under the provisions of the Paris Convention for the Protection of Industrial Property and TRIPS agreements.

• Does trademark registration grant me the right to exclusive use throughout the world?

Trademark registration has territorial value. Depending on the number of states in which you wish to obtain trademark registration, you can apply for:
– a registration with validity in Italy, at the UIBM (Italian Patent and Trademark Office);
– a registration with validity in the member countries of the European Union, at the EUIPO (European Union Intellectual Property Office);
– an international trademark application with validity in countries party to the Madrid Agreement / Protocol, at the WIPO (World Intellectual Property Organization) office.

• Is a prior art search advisable before filing a trademark?

Although, with the ratification of the Madrid Protocol, the Italian Patent and Trademark Office (UIBM) performs a substantive, as well as a formal, examination of new applications, it is still advisable to carry out, as a preliminary step, prior art searches to exclude the possible presence of identical or similar trademarks in the registers of the Countries of interest.

• What is an EU trademark?

The establishment of the Community trademark in 1996 made it possible, through a single application to be filed with the EUIPO (European Union Intellectual Property Office, based in Alicante), to apply for trademark protection valid in all member states of the European Union (it is not possible to apply for protection for only some of the states because the trademark is, in fact, unique). In addition, the application for a European Union trademark need not be based on a previous national filing.

• How quickly is an Italian trademark registration granted?

Currently, Italian and European Union registrations are granted 4 to 6 months from the filing dates while the granting of an internationally filed trademark depends on the individual designated countries; in fact, in each individual designated country the trademark has its own life independent of those of the same trademark in the other countries designated in the international application.

Design

• What does ‘design’ stand for?

Design means the aesthetic appearance of a product or part of a product. Specifically, the elements characterizing the product that can be protected by means of design registration are the characteristics of the lines, contours, colors, shape, surface texture or the materials constituting the product itself or its ornamentation, and includes the possibility of also protecting colors, or lines, which, although not relating to the shape of the product may characterize it.

• What is the difference between registrable and non-registrable designs?

Unregistrable designs are those in which:
the features of the appearance of the product are determined solely by the technical function of the product itself; the features of the appearance of the product must necessarily be reproduced in their exact form and dimensions in order to be able to enable the product in which the design is incorporated or to which it is applied to be joined or connected with other product, so that each product can perform its function

• How long does a design registration take?

Registration of a design, in Italy, lasts 5 years and can be renewed, by paying the relevant renewal fee, for periods of 5 years up to a maximum of 25 years. If you do not want to maintain design protection, simply do not pay the renewal fee relating to the next five-year period.