In brief: patent prosecution in Italy

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Business methods and medical procedures are not patentable. Software per se is not patentable, but Italy follows the European Patent Office approach, according to which software may be patentable if it has a technical character. In order to have a technical character, a computer program must produce a further technical effect when run on a computer. A further technical effect is a technical effect going beyond the normal physical interactions between the program (software) and the computer (hardware) on which it is run. On the contrary, computer-implemented inventions are patentable, provided the other legal requisites are met.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Inventors are entitled to apply for a patent covering their inventions; however, that rule suffers from a number of exceptions. If an employee makes the invention during the performance of his duty, the invention belongs to the employer, even if the carrying out of an inventive activity is not among his duties. If the employee makes an invention during his free time, but the invention relates to the business of the employer, the employer has a right of first refusal to acquire the invention. If an independent contractor under commission makes an invention, the invention belongs to the principal. In the latter two cases, there is no need to record a change of ownership because the invention belongs to the employer or the principal by operation of law.

Change of ownership in a patent is recorded by applying to the Italian Patent and Trademark Office and providing a copy of the executed assignment agreement.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

The average duration of the procedure from filing to grant of an Italian patent is about 18 months. The average cost of drafting, filing and applying for a grant of an Italian patent is around €10,000.

Are there any procedures to expedite patent prosecution?

Yes. In the event of litigation concerning the enforcement of a patent for which the application is still pending, the patent owner can request a fast-track procedure for the grant. The application is then granted in about two months.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The general rule is that the application must contain enough information to enable the skilled person to work the invention. Further, it must describe the invention to distinguish it from the prior art and must describe in full details at least one specific embodiment – not necessarily the best embodiment.

Must an inventor disclose prior art to the patent office examiner?

No, there is no obligation to disclose the existing prior art.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

There is no specific procedure for filing an application to pursue additional claims to an invention disclosed in an earlier application. The only way to do so is by filing the subsequent application claiming priority from the previous application.

Is it possible to appeal an adverse decision by the patent office in a court of law?

The party aggrieved by an adverse decision of the Patent and Trademark Office can file an appeal with the Board of Appeals. Board of Appeals decisions are subject to legal review by the Italian Court of Cassation, which is the court of last instance.

Does the patent office provide any mechanism for opposing the grant of a patent?

No, there are no procedures for opposing or objecting to the grant of a patent.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The decision is made by the courts of law and not by the Patent and Trademark Office. The fundamental rule is that the patent that is the first to be filed has priority, unless the first filer acted in bad faith, for example, by unlawfully obtaining the information relating to the invention.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

The Patent and Trademark Office cannot re-examine or revoke a patent. However, before the grant of the patent, a patentee can modify the application by supplementing it, adding further embodiments or limiting the description and claims. After the grant, the patentee can only restrict the scope of the claims of a patent. During a lawsuit, the patent owner can submit to the court a restricted list of claims if he or she thinks that the original claims would be held invalid in the light of the prior art. The court may also limit the scope of the patent by issuing a judgement declaring the patent partially invalid.

How is the duration of patent protection determined?

The patent is protected for 20 years from the date of filing.

Law stated date

Give the date on which the information above is accurate.

12 March 2021.