Since 2005, when was created an Industrial Property Code which consolidates all the laws concerning this matter, a great effort has been made by Italian legislators aimed at reorganising and at filling the large gaps that have existed for some time now in the Italian industrial property system.

In particular since July 1st, 2008 has been introduced a Prior Art Search conducted by European Patent Office (EPO) with reference to Italian patent applications which does not claim priority.

After more than two years since the introduction of the Prior Art Search conducted by EPO on Italian patent applications, procedures and schedules concerning the filing of an application and the related search report are now well-established and they comply with deadlines, at least in the majority of cases.

Within 3 months from the filing of a patent application, UIBM conducts a formal examination on applications to be sent to EPO for Prior Art Search. Applications which do not contain irregularities, are sent to EPO within 4-5 months from the filing date. Afterwards, EPO issues a Search Report together with its Written Opinion on patentability within 9-10 months from the filing date.

The result is that the applicant of an Italian patent application which does not claim priority, usually obtains a written opinion on patentability within the period during which it is still possible to claim priority. Moreover the cost charged by the Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi – UIBM) for conducting the related search is not very high and when extending an Italian application into a European one or a PCT one the applicant obtains at least a partial refund of the official fees related to European Prior Art Search.

In August 2010, a decree amending the Industrial Property Code introduced a substantial examination conducted on the basis of the search report. This is a real revolution in the granting procedure of Italian patents which is now ready to start.

From now on a cover letter will be enclosed to the Search Report and Written Opinion inviting the applicant to give his opinion on the Search and the Written Opinion within a fixed deadline. It is likely that said simple grounded reply against the objections raised in the written opinion will be sufficient to reach the grant of the patent. The same communication will be sent also with reference to all applications filed since July 2008 for which the applicant has already received the Search Report together with its written opinion on patentability.

© BUGNION SpA – April 2011


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