BUSINESS BRIEF: ITALY
BUSINESS BRIEF: ITALY Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
Although inventions in Italy can be protected as trade secrets, the best way of protecting innovations is by applying for a patent. As far as the Italian territory is concerned, an application for a patent can be filed with the Italian patent and trademark office (the UIBM) or the European Patent Office (the EPO).
Te European patent granted by the EPO covers Italian territory if a translation is filed with the UIBM. Te most appropriate territorial scope of the patent protection sought by the applicant depends on his commercial strategy. We usually advise clients to cover at least the main markets and countries where production is carried out by competitors.
What are the costs for obtaining a patent, and what are the costs of defending it?
Application costs are quite low, while the expenses related to the patent attorney and translation fees may be material, depending on the relevant field and if the prosecution of
the patent requires
amendments and correspondence with the EPO. Te cost of defending patent rights in Italy is materially lower than those typical in other western jurisdictions (not only the UK and the US, but also Germany and France).
Where can you find information on existing patents in your jurisdiction?
For patent applications as well as for patents granted, one may search an online database, available on the UIBM website, but this provides only very basic information. For information related to European patents which are enforceable within the Italian territory, one may refer to the EPO’s online database.
Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?
Te European patent is just a simplification of the granting procedure but, despite its name, it does not represent a unique title enforceable throughout Europe. Once granted, a European patent must be validated in each single European country. In Italy the validation procedure requires the translation of the patent into Italian. Tis is not just a formal requirement, since cases of infringement are judged on the basis of the Italian translation of the European patent (ie, if the scope of protection resulting from the translation is narrower than that conferred by the European patent, the former will be enforced).
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
Interim relief is the most efficient way to enforce patent rights in Italy, most notably by preliminary injunction and/or seizure. Italian courts are able to reach a first interim decision in about six to eight weeks from the filing of an application. Interim measures are usually granted aſter the court has heard both parties, although in exceptional circumstances the court may make an ex parte ruling.
Furthermore, in order to secure evidence of the infringement and its seriousness, patent holders in Italy commonly apply for a preliminary search order (descrizione). Te purpose of this is to allow the patent holder to access the infringer’s sites, production facilities, warehouses, and accounting information. Only prima facie evidence of an alleged infringement is required to apply for the search order, which is not infrequently granted ex parte, in order to avoid the defendant’s attempts to impede the applicant’s enforcement of the order.
Te order is enforced by a bailiff and a technical expert appointed by the court. Te applicant is usually authorised by the court to take part in the enforcement activities and to appoint its own technical expert(s).
Have there been any changes to the patent law(s) in the last 12 months?
120 World Intellectual Property Review Annual 2014
Italy has joined the Unified Patent Court, but is not part of the Unitary Patent system yet.
Trademarks
How do you register or secure trademark rights, and what protection does it grant? Although Italian law also grants protection to unregistered trademarks, registration is the most effective way to secure protection of owners’ rights. As far as the Italian territory is concerned, application for a trademark can be filed with the UIBM, with the Office for Harmonization in the Internal Market (OHIM) and by applying for international registration extended to Italy.
Developments in case law have made trademark laws more effective in combating trademark infringement, in particular free riding. Recent decisions hold that taking unfair advantage of a trademark does not necessarily require a likelihood of confusion. Tis offers rights holders an effective tool to protect their efforts in developing the ‘selling power’ of their brand.
What are the costs for registering a trademark, and what are the costs of defending it?
Application costs are €160 for an Italian trademark and €900 for the European trademark, plus trademark attorney fees. Te costs of defending trademark rights in Italy are lower than those in many other western jurisdictions.
What are the key threats to trademark owners, and what is the best strategy for dealing with infringement?
Interim relief is also the most efficient way to enforce trademark rights in Italy (see above on patents). It is not uncommon in Italy for the parties to settle the dispute on the basis of the outcome of the preliminary proceedings.
What are the most common mistakes trademark owners make?
To apply for interim measures the trademark owner must provide adequate evidence as to (i)
www.worldipreview.com
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