INDUSTRIAL INVENTIONS IN ITALY

Definition of invention

An invention is when a new and original solution is found to a technical problem.
The concept of industrial invention is founded on the solution of a technical problem which has not yet been solved; the solution must be able to have concrete embodiments in the industrial field such as to bring progress with respect to existing techniques and knowledge (extrinsic novelty) and to express a creative activity on the part of the inventor. It must not be therefore a simple association or application of already known ideas, applied in the same field which come within the normal use and knowledge of persons of skill in the art.
Apart from the possible novelty of the result, in order to have a patentable industrial invention it is necessary that, through the solution of a technical problem of a typically industrial nature, a new creation is achieved, which is not banal.

Rights

The rights conferred by a patent for industrial inventions are territorially defined and consist of the exclusive right to work the invention and earn profit therefrom in the territory of the Italian State, within the limits of and on the conditions imposed by the law.
This exclusive right is extended to the sale of the product to which the invention refers, but expires once the product is put on sale by the proprietor of the patent or with his consent.

• to any actions performed on private premises provided they have no commercial purpose, or attaining to any kind of experimentation;
• to the extempore preparation, in units, of medicine in chemist’s shops according to a prescription, and to the medicine thus prepared.

In particular the patent confers the following exclusive rights on the holder:

• if the subject of the invention is a product, the right to forbid third parties, except with the agreement of the patent holder, from producing, using, trading in, selling or importing for such purposes the product in question;
• if the object of the patent is a method, the right to forbid third parties, except with the agreement of the patent holder, from applying the method, or using, trading in, selling or importing for such purposes the product which is directly obtained by the method in question.

In the case of a method patent, any product which is identical to the one produced by means of the patented method is presumed to have been obtained, unless proof to the contrary is provided, by means of the said patented method, according to one of the following cases:

• if the product obtained by the method is new;
• if there is a substantial probability that the identical product was made by means of the patented method and if the holder of the said patent is not able, by means of reasonable efforts, to determine the method actually followed.In the effort to show proof to the contrary, the legitimate interest of those accused of infringement in protecting their manufacturing and commercial secrets must be respected.

In the effort to show proof to the contrary, the legitimate interest of those accused of infringement in protecting their manufacturing and commercial secrets must be respected.

In Italy a patent for industrial inventions lasts 20 years from its filing date and is subject to the payment of annual maintenance fees, starting from the fifth year.

The exclusive rights of a patent are conferred with the concession of the patent certificate.
The effects of the patent come into force on the date on which the description and drawings attached to the patent application are made available to the public, or, in the case of an infringing third party, from the moment when the content of the patent application is notified to him.

Unless there is a specific request for advance publication, which must be presented with the patent application, the application is in any event available 18 months after the filing date.
If the application has been filed first in a foreign country and then extended to Italy under international priority, namely within the convention period of 12 months from the first filing date, the application is made available upon expiry of 18 months from the first filing date.

Italian Patent Law includes the concept of prior use.
This concept indicates that anyone who, during the twelve months before the date of filing of a patent application, or before the priority date, has made use in his own Company of an invention which then becomes the subject of a patent application by another party, may continue to use such invention within the limits of such prior use.

This entitlement may be transferred only together with the Company, or branch of the Company, in which the invention has been used. The person claiming prior use is responsible for proving such prior use and its extent.

Types of rights

The rights arising from an invention are rights of a personal nature (the moral right of the inventor, a personal and inalienable right) and of a patrimonial nature (rights which are disposable or transferable).

Patrimonial rights arising from inventions can be alienated either by deeds drawn up by living persons or through death; they are also subject to forfeit, confiscation and expropriation (for debts, or in the public interest).

Requirements of patentability

In order to be patented, an invention:

• must be lawful
• must be suitable for application in the industrial field
• must be new
• must not be obvious, that is, it must not be a natural evolution of the state of the art.

Lawful means that inventions which, if worked, would be against public order or morality, cannot be the object of a patent. However, the working of an invention is not considered against public order or morality simply because it is forbidden by a law or administrative regulation.
Breeds of animal, and the essentially biological procedures followed in order to obtain them, cannot be patented either. However it should be noted that it is possible to patent microbiological procedures and also the products obtained by such procedures.

An invention is considered new if it is not included in the state of the art. State of the art means everything which has been made available to the public in the territory of the State or abroad, before the filing date of the patent application, by means of a written or oral description, by use, or by any other means.
The state of the art is also considered to include the contents of Italian patent applications, or the contents of applications for a European or international patent which designates Italy, as they have been filed, which have a filing date earlier than that of the invention, even if they have been published or made available to the public later; this is on condition that their content is identical to that of the later patent document.

An invention is considered not obvious, and hence implying an inventive activity if, for a person of skill in the art, it is not obvious from the state of the art.
In deciding whether an activity is inventive or not, the documents comprising national applications, European applications or international applications designating Italy are not taken into consideration, when they have a filing date prior to that of the invention and have been published, or made available to the public, at a later date.
An invention, if it is to satisfy the requirement of inventive activity and be considered not obvious, must be intrinsically new. That is, it must entail an improvement, that is, the solution of a new problem, even if it is only small, as compared to the state of the prior art in that field at that given time.

The content of the invention must not be such as can be inferred from what existed beforehand, and it must entail the solution of technical and/or technological problems; therefore it must not be a mere combination of things or facts already known.

Types of inventions

Inventions can refer to a product, a device to obtain a product, or a method.
Computer programs used to manage physical machines or functions, such as for example road junctions, can be protected by means of a patent of invention, provided that the functions performed by the program are protected.

They may be main inventions, if they have been conceived independently of any other invention, or derived if they employ elements of one or more earlier inventions.
When an invention is dependent on a patent which is still valid and belongs to a third party, the dependent invention cannot be embodied without the authorization of the owner of the previously patented invention, and that owner cannot embody the dependent invention without the authorization of the owner of the same.

• inventions of improvement to what is already known, whether patented or not, and such inventions are subject to the regulations for derived inventions as regards their embodiment;
  
• inventions of transfer when they entail a new employment of something which is already known, or a previous inventive idea, by means of an original application of the same in a different field of the art and for purposes other than the original purpose;
• inventions of combination, which are those inventions realized by an intimate union or amalgamation of elements taken from something known or from earlier inventions.

Procedure

In Italy a patent application can be filed at the various Chambers of Commerce, Industry, Handicraft and Agriculture or at the Italian Patent and Trademark Office in Rome (UIBM).

Since 1 July 2008, pursuant to the Ministerial Decree of 27 June 2008, applications for a patent of industrial invention without any priority are subject to an examination.

It is possible to send the claims, already translated into English, to the Italian Patent Office (IPO), or to pay the search fees. The translated claims must be sent, or the search fees paid, at most within two months from the filing date, otherwise the application is rejected. When the Italian Patent Office receives the application, it assigns the class and carries out a pre-filtering operation in order to eliminate applications that are obviously unpatentable. If the patent application is of no interest for the purposes of national defense, and if it is formally correct, it is sent to the European Patent Office (EPO), which carries out a search of the prior art and sends a report and a preliminary opinion to the IPO, within nine months from the filing date. In an urgent case, it is possible to request an accelerated procedure from the IPO, which reserves the right to decide. EPO carries out its search on the basis of the translated claims with the support of the description, translated by software if not already supplied at the moment of filing. If there are doubts on the search, it is possible to request a copy of the translation made by software. EPO may object to inventive non-unity, and make its search on a part of the patent only. Since 1 July 2008, a fee has also been introduced for each claim after the eleventh. After receiving the search report and the preliminary opinion, there are 9 months to make any voluntary comments or amendments to the text. On the 18th month from the filing date all the documentation becomes accessible to the public and the application is examined by the Italian examiners, who must base themselves on the search report and may use the preliminary opinion issued by EPO only as a reference. A patent subject to the new Italian procedure which is extended within the European or PCT framework may have the right to a refund of part of the search fee, if the claims are identical to those used in the first Italian filing. In the event of a request for an early issue, if the search is still in progress, the patent is granted without a search, and an annotation is made in the public file that no search has been made.

When it has been filed, a patent application is first examined to see if it is in the interest of national defense, then it is examined to see if it is formally correct.

There are also countries where third parties are allowed to present an opposition to the definitive grant by presenting a proper, reasoned request within a certain period from the date of grant by the Patent Office of that country.

Inventions by employees

If the invention is made by an employee, or by someone working to a contract, including consultancy, or out-sourced design work etc., which can be considered as subordinate work, the employee under certain conditions is entitled to a bonus, but the Company is the owner of the invention.

• the employee-inventor is not entitled to any bonus;
• the employee-inventor is entitled to a “fair bonus“;
• the employee-inventor is the owner of the invention but the employer has the right of pre-emption;
• a researcher working for a University or public research body has the right to a particular treatment.

The following cases may arise:

• an industrial invention is made during the performance or fulfillment of a contract or a relationship of work or employment, whereby the inventive activity is deemed to be an object of the contract or relationship and is rewarded accordingly.    
  In this case the rights arising from the invention belong to the employer except for the inventor’s right to be recognized as such; the inventor is not entitled to any bonus or compensation;
• no reward is laid down or established as a compensation for the inventive activity, and the invention is made in the performance or fulfillment of a contract or a relationship of work or employment.   
  In this case too the rights arising from the invention belong to the employer, but the inventor is entitled to a fair bonus and retains the right to be recognized as the inventor.

In both these cases the invention is made in fulfillment of an activity to which the inventor is bound by contract or by a relationship of work or employment. In the first case the activity is explicitly deemed to be inventive and is rewarded for the purpose of invention, whereas in the second case, though the activity possesses features showing an objective connection with the invention (for instance, research, experimentation, trials), it is not rewarded for that purpose.

If the conditions identified above are not fulfilled, but the invention is performed in the field of activity of the company where the inventor is employed, then the employer has the right of pre-emption for the exclusive or non-exclusive use of the invention or for the purchase of the patent. In this case, the employer is also entitled to extend the patent to foreign countries or to purchase, for the same invention, patents already extended abroad.
The right of pre-emption is subject to the payment of a royalty or a sum to be decided with the deduction of a sum corresponding to the assistance received by the inventor from the employer.
The right of pre-emption must be exercised within three months of the announcement of the patent being obtained. If due payment is not made in full at the due dates, the rights acquired by means of pre-emption are legally terminated.

When he works for a University or a public authority which has research among its institutional purposes, the researcher is exclusive owner of the rights deriving from the patentable invention of which he is the author. In the event that there are several inventors, all employed by the University, by the public authorities as above or by other public authorities, the rights deriving from the invention belong to all in equal parts, unless agreement has been made otherwise. The inventor presents the patent application and communicates this to the administration.
Universities and public authorities, to the extent that they are autonomous, establish the maximum amount of the royalties relating to licenses to third parties for the use of the invention, due to said University or public authority, or to the private financiers of the research, and also every other feature of the reciprocal relationship.
In any case, the inventor has the right to no less than 50% of the proceeds or royalties earned from exploiting the invention. In the event that the Universities or public authorities do not make the provisions as set out in clause 2 of the above-cited article, then they have the right to 30% of the proceeds or royalties.
If after five years from the grant of the patent the inventor or his successors in title have not started the industrial exploitation thereof, unless this derives from causes beyond their control, the public authority where the inventor was employed at the moment of the invention automatically acquires the free but non-exclusive right to exploit the invention and the patrimonial rights connected thereto, or to allow third parties to exploit them, while the inventor retains the right to be recognized as the author of the invention.

It is possible to have a patent of industrial invention requested by an inventor during the year after leaving the employment of the company or the Public Authority. In this circumstance the patent is deemed to have been made during the existence of the agreement or contract of employment, on condition that the patent concerned falls within the field of activity of the company or Public Authority.

Transfers and licenses

The owner of a patent may transfer to third parties the total or partial ownership of the patent.
A patent may not be obtained merely for blocking purposes, it must be worked. If it is not worked, then after a given period and if the appropriate conditions are fulfilled, third parties may request a compulsory license, which is subject to precise and particular rules.

The proprietor of a patent may assign to other parties, by means of a license, the right to exploit the total or partial contents of a patent, within agreed limits to be determined by the contracting parties.
Such limits may concern the duration of the license, the territory covered, the type of use, and the type of exploitation etc.

Licenses may be exclusive, or not, and may permit sublicenses, or not. They may also be used in opposition against the licensor.

The field of protection of a patent

Both in Italian and in European law, it is a fundamental principle that the field of protection of a patent is determined by the content of the claims; the description and the drawings are considered only for the purposes of interpreting the claims.
Since the claims define the subject matter of the protection requested, they must be clear and concise, they must be founded in the description and they must be comprehensible in themselves.
In the case of infringement, protection is defined by the so-called subject matter of the invention as identified in the independent claims by the so-called person of skill in the art. A dependent claim is considered infringed only if the independent claim which supports and justifies the dependent claim is infringed.
Clear and obvious equivalents, as adopted in an infringement, are included in this protection. By equivalents we mean those technical means, instead of the means described in the patent at the moment of the priority date, the alternative use of which was obvious for the person of skill without having to apply a particular mental effort.
Furthermore, the concept of equivalent means is also important in the examination procedure, that is, in the procedure which precedes the grant of a patent in the systems which have a prior examination to assess the relevance or irrelevance of a prior art document, or in a court of law as happens for example in Italy: the examination procedure serves to define the subject matter of the invention or its protected field.

The formulation of claims for medicines provides that, when the medicine is a new product, it can also be protected as a medicine according to the protection granted to the substance.
When the product used as a medicine is in itself known, but without therapeutic characteristics, the substance or mixture of substances can be protected for specific use in a therapeutic treatment.
Claims are independent or dependent.
An independent claim is a claim which reproduces the essential characteristics of the invention for which protection is requested, and serves to identify the subject matter of the invention.
A dependent claim contains all the characteristics of the previous claims to which it is connected, and indicates other characteristics for which protection is requested.
It matters nothing that the dependent claim is in itself patentable with respect to the state of the art or even with respect to the independent claim to which it is connected. This is important only when the main claim which supports it is not patentable itself. In some systems, a dependent claim which is patentable in itself can be the object of a divisional application to be filed by the grant date of the main application.

The claims have to be supported by the description, so that the object of every claim must find a reference and grounds in the description. The scope of the claims cannot go beyond the scope which is expressed in or can clearly be inferred from the description and the drawings.

The protection of patents

The protection of the exclusivity of patented inventions is both a civil and a penal matter. It concerns both patrimonial rights and the moral right of the inventor.

Judicial proceedings to protect the exclusivity right may be proceedings of ascertainment, prohibition, recovery of damages, and also of claims when the ownership of a patent is in dispute.

Legal actions regarding patents for industrial inventions are characterized as movable commercial actions.
Legal actions regarding industrial inventions are brought before the Specialized Sections at specific Courts which have an Appeal Court (Trieste, Venice, Milan, Turin, Genoa, Bologna, Florence, Rome, Bari, Naples, Catania, Palermo), whatever the nationality, domicile or residence of the parties involved.
According to the various cases, the actions are brought before the Specialized Section where the defendant is domiciled, or where the plaintiff is domiciled or resident, or before the Specialized Section in Rome.
It should be remembered that the address noted in the register of patents is taken to be the elected domicile, in order to determine the competent Court and for all notifications, both administrative and judicial.
When an action is based on facts which are assumed to damage the plaintiff’s rights, this action can also be brought before the Specialized Section of the place where the unlawful acts have been committed.

The burden of proving the invalidity or lapse of a patent in any case falls to whoever challenges the patent, while the burden of proving infringement falls to the holder of the patent.
The owner of the rights of a patent may ask for a description or confiscation of whatever is alleged to infringe said rights. He may also request that the documents attesting or documenting the extension of the damage shall be taken.
The description and confiscation are carried out by a Judicial Officer, assisted when necessary by one or more experts and also by using any technical means or photographic means or any other means.

The owner of the patent rights can ask for the manufacturing, trading and use of whatever is in infringement of the patent to be prohibited.
Such a request is subject to the regulations of the Code of Civil Procedure concerning interim measures.
When the judge decides for prohibition, he can establish a sum owed for every violation or non-observance occurring later, or for every delay in carrying out the measure.

Actions for ascertainment and negative ascertainment are requested when a third party wishes to ascertain that one of his products does not infringe the specific rights of others, and where another party desires to verify the validity of the rights of others. Actions for negative ascertainment cannot be brought against third parties which do not have registered offices in Italy.

The penalties which a person who has been found to commit an infringement may incur consist of publication of the ruling, apportionment of the infringing articles to the owner of the patent as his property, the removal, deprivation or destruction of such articles, and the payment of a sum to compensate for the damage caused.

An application for a patent can be extended abroad, under the priority procedure, within 12 months of the first filing.
It can also be extended outside the priority procedure, that is, within 18 months from the first filing, provided that the content of the patent application has not been made available to the public and provided that the subject matter of the invention has not been otherwise disclosed, or on condition that third parties have not in the meantime filed an identical application.

Extension abroad can be done country by country, that is, taking advantage of one of the unified procedures such as that under the European Patent Convention or the international application Convention (PCT). The PCT provides a procedure which allows to delay the moment when one has to decide in which countries to confirm a patent title.
In practice, therefore, the PCT procedure must be considered a delaying procedure not a granting procedure, whereas the European Patent procedure is a granting procedure.

An extension must be considered in the same way as any other production investment.
The expenses for patent protection must therefore find a correspondence in a reasonable turnover, and the relative margin of contribution or in the advantage over competitors which the owner hopes to acquire.
Likewise, a patent title must be abandoned as soon as it becomes apparent that there is no real advantage in it in terms of protective barrier or turnover. A first revision should be made seven years after first filing.
In those countries where there is no security under the law, patents should be filed only after long meditation and evaluating the commercial reasons.

Searches

In order to obtain information on the patentability of an invention, or the validity of a patent, or the patent titles existing in a specific field or owned by a specific owner, it is necessary to carry out the appropriate specific searches. There are different types of specific searches, each of which is characterized by its own level of reliability with regard to the results.