ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
1.3 Timeline for Grant Procedure Duration of Grant Procedure
owner, who, based on these results, may con- sider whether to extend the patent application abroad within 12 months from the filing date of the national application by availing the user of the right of priority. Following the receipt of the search report, the user is entitled to submit a reply containing observations or any amend- ments to the description and/or claims to the UIBM within three months after the expiry of the 18 months of secrecy of the application. If the application meets all the requirements, including the patentability criteria, a patent will be granted. Upon grant, a patent certificate is issued, giving the patent holder exclusive rights to the invention for a specified period. Utility Models Like patents, the process starts with the filing of a utility model application with the UIBM. Unlike patents, utility models in Italy are generally granted without any detailed assessment of its content: in addition, no prior search is conduct- ed. Due to the very limited scope of protection granted and the absence of the free of charge EPO technical opinion, this kind of IP right is substantially not very useful. It can be only used as a remedy to ask a judge to convert in a utility model a patent lacking inventive step in the case of a litigation where the infringement is literal. SPCs To apply for an SPC, the patent holder must have a basic patent in force that protects an author- ised medicinal or plant protection product and the product must have received a valid market- ing authorisation. An application for an SPC is submitted to the UIBM within six months of receiving the marketing authorisation. The UIBM evaluates the application based on the criteria set out in Regulation (EC) No 469/2009.
The duration may vary depending on factors such as the complexity of the application and the workload of the UIBM. The process is com- pleted within 24-25 months from the filing date, if successful, with the granting of the IP right or, if not, with the rejection of the application. Need for Representation It is possible to file patent, utility model and SPC applications without legal representation. Average Costs Filing fees vary depending on whether the patent application is for an invention or utility model. For patents, there is a basic fee of EUR50 for online filing, while it is between EUR120 and EUR600 for paper filing, depending on the num- ber of pages in the application. In both cases, there is an additional fee of EUR45 for each claim beyond the tenth. A fee of EUR200 is also required for the English translation of the claims, if they are not filed by the applicant, as it is an essential document that forms part of the patent specification to be sent to the EPO for the prior art search. For utility models, there is a filing fee of EUR50 for electronic filing, and EUR120 for paper, regardless of the number of pages and the num- ber of claims. 1.4 Term of Each Intellectual Property Right Patents The standard term for a patent in Italy is 20 years from the filing date of the patent application.
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