Patents

WE LISTEN TO THE INVENTOR AND ENTREPRENEUR TO DRAFT HIGH QUALITY PATENTS

  • Consulting on strategic development of IP portfolio
  • Worldwide searches and filing, direct filing in the EU and USA
  • Technical consultants in litigations with very high success rate for our customers
  • Analysis state of the art and monitoring of competition
  • Freedom to operate analysis
  • Due diligence and IP portfolio analysis
  • Licensing Agreements and non disclosure Agreements

 

THE BENEFITS of a patent

  • It is an effective protection against the risk of copies from competitors
  • It confers the exclusive right to use the invention
  • It is fundamental for start-ups that do not yet have commercial strength
  • A patent portfolio is an indicator of commitment to innovation increasing companies reputation and value
  • Reaps the value of innovation, which becomes an asset that can be entered in the financial statements, licensed or transfered
  • Protects the resources invested in research and development
  • Often grants tax benefits
  • Increases financial contributions: ownership of patents (or the license to use them) certifies the know-how and it may prove essential to obtain additional financial resources for technical and commercial development

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.