ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, EY Tax & Law
prior art references, or other relevant informa- tion that the third party believes is pertinent to the patentability of the invention (ie, patentabil- ity criteria, such as novelty, inventive step and industrial applicability). Where – during the granting proceeding – obser- vations are received by the office from third par- ties: • the examiner shall acquire the comments on file in order to make them available; and • the examiner evaluates the comments but is not obliged to respond to the third parties and/or to inform or transmit to the holder of the application the comments received. 1.8 Remedies Against Refusal to Grant an Intellectual Property Right Pursuant to Article 135 of the Italian IP Code, in the case of disagreement with a negative deci- sion by the UIBM, within 60 days of receipt of the rejection order, the applicant can decide to submit a formal request for appeal to the appro- priate commission (the Board of Appeal of the UIBM). 1.9 Consequences of Failure to Pay Annual Fees The relevant fee must be paid annually, on the day corresponding to the filing date of the pat- ent. For utility models, it is necessary, at the same time as filing the application, to pay five annuities and, after five years, to pay the other five, so in total a maximum of two payments. If the annuity is not paid, the patent lapses and has no further validity. In the case of a late payment, there is a period of six months within which it is still possible to pay the annuity by adding a surcharge, while
after six months it is no longer possible to rem- edy the failure to pay, except in very rare and exceptional cases. If the annuities are not paid during the period when the patent is at the appli- cation stage, there is an additional period of four months from the grant within which it is possible to remedy the irregularities, after which it will no longer be possible. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights In the case of changes in the rights conferred by the industrial property title (eg, transfers of own- ership, changes in the owner’s personal status, additions or corrections to the original documen- tation), a special application, also known as a patent follow-up, must be submitted. Applica- tions are submitted to the UIBM either online or on paper. Italian law also expressly allows the patent to be amended even in the course of litigation: some- times this can be necessary when the patent containing the original claims is in risk of being declared invalid because it has already been anticipated by similar patents while, conversely, by narrowing the scope of protection and thus limiting the claims, the patent may retain validity even if with a more limited scope.
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
Owners of technical intellectual property rights in Italy have various actions and legal remedies available to address infringement, as listed below.
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