Patents

WHAT is a patent

It is an agreement between the owner of a substantial innovation and the State granting the patent. The owner of the innovation makes it available to the community and the State rewards the owner by granting a monopoly on its territory for a fixed period of time.

The monopoly provides the right to prohibit others, without the consent of the owner, to exploit economically the invention, preventing not only the production but also the sale (even if for export only).

The legislation in Italy and the EU distinguishes two types of protection:

- the Patent for Invention which can be used to protect machines, articles of manufacture materials and processes that constitute a new and original solution with respect to what was already known.

duration/term: 20 years.

- the Utility Model with which devices (mechanical, electrical or even electronic) can be protected using already known technical principles but with new particular effectiveness or convenience of application or use. It is not usable for new materials or processes.

duration/term 10 years.

WHY you must file your patent

  • creates serious obstacles to the competition
  • confers the exclusive right to use the invention
  • is essential for start-ups that do not yet have commercial strength
  • a patent portfolio shows focus on innovation and increases the reputation of well-established companies,
  • makes tangible the value of innovation, which becomes a good that can be entered in the balance sheet, can be licensed or transferred,
  • protects the resources spent on research and development by preventing others from exploiting without your consent,
  • offers benefits of reduced taxation on incomes that procures (facilitated tax regime "patent box")
  • increases the possibility of obtaining financial contributions: the ownership of patents (or the license to use patents of others) certifies the know-how and may prove essential to obtain additional financial resources for technical and commercial development

WHEN to consult a Patent Consultant

Always,

in a company that maintains a process of continuous innovation.

Not incidentally,

at the moment of an invention when very often (one in three cases) is too late.

Resorting to a patent consultant only when innovation is finally ready to be patented, is a serious mistake. Statistically, a prior art search finds an obstacle one out of 3 times, even when there is still no trace of it on the market, better then to detect obstacles at an early stage when it is still possible to find alternative and improved solutions.

In fact, three are essential purposes:

  • avoiding to infringe patents of others
  • preventing competitors from obtaining a patent on a non-novel or non-inventive concept
  • protecting inventions timely before a competitor can file a later patent

 

Therefore, a Patent Consultant is needed for ...

.... avoiding to infringe patents of others

  • when there is the plan to introduce new technologies: even if these could seem trivial, some may be covered by an unsuspected patent
  • when there is the plan to undertake a research project: to avoid beating roads already travelled and get the latest state of the art

.... preventing the competitors from obtaining a patent on a non-novel or non-inventive concept by

  • intervening in the examination procedures, with objective showings and appropriate citations
  • filing patent applications not only on breakthrough innovations but whenever there is a risk that others will obtain a patent on a new relevant improvement

.... ensuring a priority date as soon as the invention is ready for patenting

  • this is the final step of a research and development approach that takes the IP strategy on due account

If you're wondering ...

One of the statutory requirements for an idea to be patented is the NOVELTY.

An invention is new if it is not included in what is called the "state of the art", i.e. if it has not been made available to the public in Italy or in any other country.

An invention that has been disclosed and made available to the public is considered publicly known and it is therefore not considered worthy of a right to exclusive exploitation.  

Yes: it takes experience and attention to details; especially for the "claims" that constitute its essence. Ambiguity in the text is not allowed. The claimed protection must be absolutely legitimate and clearly described. Otherwise, the patent is totally or partially invalid.

Yes, and it is natural if the claims involve weak novelty or innovation.

Yes, and unfortunately, if the patent is poorly written and so poorly protective.

Not if the invention is strong and is effectively written.

Those who incur in counterfeiting a legitimate patent may also face criminal charges.

Filing for a patent is always safer; even short patent applications on small novelties anticipate and prevent subsequent patents from others; this costs a lot less trying to demonstrate to a Patent office that a later patent is in fact not novel.

 

No, it is not mandatory but highly recommended.

By means of a prior art search, a general knowledge of the state of the art is obtained; the patent activity of competitors is monitored; one has an idea of the market trend; it ensures to avoid unknowingly counterfeiting patents from others and, at the same time, provides clues to possible violations of own patents.

Online several free databases are available, e.g. Espacenet, run by the European Patent Office.

However, the research is not so simple for inexperienced users and the results of a do-it-yourself search could be extremely partial and limited.

Certainly, before the invention is disclosed, a disclosure would compromise the validity of the patent itself in many areas of the world.

While developing the idea, as soon as the invention is sufficiently defined to be described with as much technical precision as possible. It is always possible to file additional patents to complement an initial idea with further relevant improvements.

To obtain a patent, the description must enable one skilled in the art to replicate the invention without undue experimentation: so the essential features must but adequately described if testing is needed this must be domìne before filing the application.

The exclusive right to produce or market the invention arises in the State where the application was filed. Therefore, if you are the owner of a patent only in Italy you will acquire the relative rights only there and not in other foreign countries.

The invention can therefore be freely used in other countries, but if the patent has been published, no one else anywhere can obtain a patent because the invention has become "known art".

If the patent has been filed but it is still secret, it would be possible for third parties abroad to file an application and obtain a patent. Remember, however, that the national application holder has one year from the national filing to extend his patent abroad, prevailing over those who filed after the same invention.

 

In Italy, about 24 months for utility models, and 30-36 months for invention patents.

Abroad it varies from country to country.

The owner of a patent has the exclusive right to use his own invention and in order to use a product, a solution, and a patent, his consent is necessary.

However, the law provides that it is allowed to use the invention for private and non-commercial purposes (e.g. for didactical or for research purposes, also by competitors, non directed to commercial exploitation).  Other derogations also apply to pharmaceutical patents.

A disclosure of an invention before filing is prior art which acts as a ban to patenting in Italy, the EU and most other countries; an exception is US where a grace period of one year is given from applicant's disclosure to file an application for patent. 

A disclosure is considered such both when the inventor describes his idea in scientific articles, magazines, conferences, and when the invention is described in private interviews with parties not bound by a non-disclosure agreement.

Please note: exposure to fairs or public events is also usually a disclosure.

So if you have not yet patented your idea, do not disclose it in any way and, if it is necessary to bring it to the knowledge of others, make sure all parties have signed a non-disclosure agreement.

An invention is original if it does not appear obvious to a person skilled in the art, in light of the state of the art at the moment of filing.

There is also talk of inventiveness of the patent, and the law provides that it constitutes a technical progress with respect to what is already known and present in the field.

The extension abroad is based on the so-called "Union priority" rule: it provides that an applicant has a grace period of 12 months after the first filing to file in additional countries and keep the first filing date as priority date.

It is possible to extend a patent application abroad either by filing with the individual national offices or by using some unified procedures, designed to simplify and coordinate the phases of examination and granting of patents in several foreign countries.

Among the main unified procedures are those of the European-EPO, which grant patent protection substantially in European countries or the international-PCT which grants patent protection also in non-EU countries.

The choice of the extension procedure is generally done on the basis of strategically interesting states from a commercial and/or production point of view for the patent owner to be extended.