Patents

The first step to take when the patent is still taking its first steps is a novelty search. It is thus possible to evaluate the actual possibility of obtaining the granting of the patent, evaluating the documents of the state of the art that could in some way anticipate it.

In fact essential requirements for obtaining a patent are novelty and the inventive step.

These factors are evaluated with respect to what is known in the state of the art.

To be novel, a patent must not be anticipated by the state of the art, while to be inventive the particular technical solution must not be evident to an expert in the art.

With the filing with one of the competent offices, the administrative procedure is started to obtain the granting of the patent in order to obtain the right to be able to use it with exclusive rights, preventing counterfeiters or competitors from skillfully copying technical solutions that have required years of work and huge expenses to be studied.

If granted, the patent has a maximum duration of 20 years and annual maintenance fees are required.

Depending on the particular commercial interests, it is possible to file different types of patents:

• an Italian patent, at the Italian Patent and Trademark Office (UIBM);
• a European patent, from the European Patent Office (EPO);
• an international patent or PCT, with the World Intellectual Property Organization (WIPO); or
• a national foreign patent.

As can be easily understood from the name, an Italian patent is valid on the Italian territory, while the European patent and the PCT allow for protection in the states adhering to the European Patent Convention, and the Patent Cooperation Treaty.

The European patent is not to be confused with the European Patent with unitary effect, which will allow, once approved, to obtain protection throughout the European Union.

During the filing phase, it is of fundamental importance to draw up claims which indicate in a succinct and detailed way the elements of the patent for which protection is sought. Filing inaccurate claims or including unnecessary elements can lead to the loss of effectiveness of the entire patent and cancel the efforts made.

The standard procedure after filing provides that the patent is examined by the competent office in order to evaluate novelty, inventive step and industrial applicability.

After a few months, a search report will be drawn up which contains state-of-the-art documents that are considered relevant at the end of the granting of the patent.

Based on the outcome of this report, it is possible to study the best way to modify the text of the patent in order to pass the subsequent examination phase.

Also in this case, any changes that are not formally correct can lead to the invalidation of the patent, losing all rights to it.

Once the examination phase has been successfully completed, the patent will be granted. The final claims granted could also be substantially different from those initially filed and consequently guarantee a different protection.