You are head of patents at SIB, what does that role entail?
I coordinate the work of my patent attorney and paralegal colleagues with respect to relationships with clients and inventors and substantive patentability, validity and infringement issues. I am also responsible for selecting which SIB attorneys are best suited to a particular client’s needs, enabling us to provide a tailored service.
In addition, as a member of SIB’s board of administration, I contribute to encouraging each of our professionals – depending on their individual skills and inclinations – to become an active member of the international IP community, particularly by working in IP associations.
In which technology areas are you seeing the greatest increase in patent activity and what is driving this?
We are witnessing a great increase of activity in the field of AI and computer-implemented inventions, with a particular focus on biomedical applications and mixed-type implementations. New technologies always foster interesting debates about whether ‘old’ regulations can meet the challenges of affording such technologies adequate protection, and this kind of discussion is one of the things that makes our profession so motivating and inspiring.
At the same time, it must be noted that in Europe, ‘traditional’ engineering achievements still continue to drive the greater part of IP activity.
What are the key differences between prosecuting patents at the EPO and the Italian Patent and Trademark Office (UIBM)?
Generally speaking, there is no difference in the substantive patentability issues being raised, as the UIBM has the same requirements as the EPO. However, the procedure before the EPO is more articulated and requires additional appropriate knowledge of specific case law. Moreover, Italy has no post-grant opposition procedure for patents, and priority-claiming and utility model applications are granted without prior art search and detailed examination of substantive patentability requirements.
You are a court-appointed expert in patent cases, what does this involve?
Italian judges deal with almost all court proceedings involving patents – many of which involve industrial designs – by appointing a super partes court expert to engage in a technical written debate with the ex parte experts and prepare a final brief setting out their conclusions in terms of validity and infringement. It is a stimulating task which allows the court-appointed expert to deal with a diverse range of contentious situations.
How do you see the Italian patent landscape evolving over the coming years?
Italy is following the general European trends regarding technology and improving its longstanding tradition of innovation via small and medium-sized enterprises and start-ups. Italian companies are active in the EU, Asian and US markets and for this reason their awareness of, and interest in, acquiring international IP rights has consistently grown over the past decade.
On the flip side, we hope that foreign companies’ interest in investing in the Italian market and associated IP rights will grow, particularly in view of the imminent opening of a direct national route via the Patent Cooperation Treaty.
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