ONLINE IP FILINGS NOW AVAILABLE JURISDICTION REPORT: ITALY
Julia Holden and Lorenzo Battarino Trevisan & Cuonzo
On February 2, 2015, the Italian Patent and Trademark Office (UIBM) opened a new chapter in its history by finally introducing a system that allows any applicant, whether an individual, registered company or a patent/trademark attorney, to file applications for new patents, trademarks, or industrial designs online. With the new system, applications, requests for trademark renewals,
and translations of European patents can now be filed through a special section of the UIBM website. To access the service users require a registered email address as well as an electronic signature. Registration is, however, straightforward and can be carried out by following the simple instructions on the office’s portal. Even the payment of fees relating to registration, filing and renewal
of intellectual property rights has been streamlined: the amounts will now be calculated automatically during the filing process and can be paid directly through an online banking system, replacing the traditional payment by postal order. In addition, the system promises a real-time updating of databases on industrial property. Te more traditional form of paper filing with the office or with
different Italian offices such as the Italian Chamber of Commerce is still available. Te new system implemented by the UIBM mirrors the online filing
systems existing in many countries and already available at the Office for Harmonization in the Internal Market for filing new trademarks and opposition proceedings, and at the European Patent Office (EPO) for filing European patent, Euro-PCT and Patent Cooperation Treaty applications, submissions in oppositions, appeals, limitations and revocation proceedings, and all related documents. Te reform is part of a larger effort undertaken by Italian authorities
in the last few years to improve the efficiency of public services and reduce bureaucracy with a view to attract ever more investments in the country by foreign businesses. Tis effort recently led, for example, to the introduction of the electronic filing of all court motions, pleadings and related documents in civil and commercial litigation. Tis new system, despite its being a recent innovation and therefore still needing to be fine-tuned, has already helped litigating parties to streamline the filing process, assisted the court offices to manage all case files more easily without having to deal with unwieldy paper files, as in the past, and helped judges to keep track of all documents and briefs filed in a case. Likewise, the new system for online IP filings is undoubtedly a
step forward for simplifying the procedure for the applicant and, it is hoped, for efficiency at the office, which must manage a high number of applications that need to be processed. Streamlining bureaucracy related to the filing of applications for
80 World Intellectual Property Review May/June 2015
industrial property rights should not, however, mislead those who want to protect an idea or a brand in their business activities. Te scope of protection conferred by the title, once granted, depends
on how the application was completed. Te filing of an application for an IP right (a patent, trademark or a registered model, etc) particularly requires skill and expertise in identifying how best to protect the strengths of the invention, the innovative aspects of a design or the features (wording and logo, etc) of a trademark. Tis positive development in the administrative efficiency of
application procedure for patent, trademark and industrial design applications should not therefore be seen as a new ‘DIY opportunity’ for private individuals and companies to register and file their IP rights. Protecting IP is oſten complex and the support of skilled professionals
is strongly advisable, especially to prevent inexperienced users from encountering difficulties later down the road when protecting and enforcing IP in the long term. Tis streamlining of applications is, however, a positive step for the UIBM and will be welcomed by the entire Italian IP community.
Julia Holden is partner at Trevisan & Cuonzo. She can be contacted at:
jholden@trevisancuonzo.com Lorenzo Battarino is a trainee at Trevisan & Cuonzo. He can be contacted at:
lbattarino@trevisancuonzo.com
www.worldipreview.com
“PROTECTING IP IS OFTEN COMPLEX AND THE SUPPORT OF SKILLED PROFESSIONALS IS STRONGLY ADVISABLE, ESPECIALLY TO PREVENT INEXPERIENCED USERS FROM ENCOUNTERING DIFFICULTIES LATER DOWN THE ROAD.”
the
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