Patent consulting

European Patent
The Convention on the Grant of European Patents (EPC, Munich, October 5^th, 1973) established a unified procedure for filing, examination and grant of a European Patent, which is done by the E.P.O. (European Patent Office). Through a single application, protection is requested in the countries that have signed the Convention and in the territory of the designated states a title is obtained which gives the same rights as the respective national patents.

Member States

The countries that have signed the European Patent Convention are Albania, Austria, Belgium, Bulgaria, Czech Republic, Cyprus, Croatia, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, North Macedonia, Malta, Monaco, Montenegro, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, and the United Kingdom.

Priority
Within 12 months from the filing date of a national patent, its validity can be extended on a European level by claiming priority.

Duration
20 years.

The steps

• Filing of a patent application and obtaining its filing date and relative priority date, with which in the following 12 months it will be possible to file patent applications for the same invention in other countries where it will be examined, from the point of view of novelty and inventive step as if filed on the priority date.
• Receipt of the search report, which includes a report prepared by an expert examiner in the field reporting relevant prior art documents with respect to the invention which is the subject-matter of the patent application. The owner has to reply to said search report so as to overcome the objections raised.
• Publication of the patent application (18 months), at which time it is made available to the public. From publication, the owner of an application can prevent anyone from using the invention by initiating legal actions or requesting precautionary measures to this aim.
• A period of 6 months in which to choose whether to proceed to the next step, which is a substantive examination in which the EPO (European Patent Office) will decide whether the invention and application meet the requirements of the legislation on the European Patent Convention. Following the substantive examination sent by the EPO, a dialogue opens between the examiners and the representative/applicant, in which formal objections are raised and reformulations of crucial parts of the Patent Application are requested.
  – A notice of intention to grant is issued, which presupposes the request for approval of the text by the owner.
• The EPO proceeds with the final granting of the title. An appeal against the rejection may be submitted to an internal Board of Appeals of the Office.
• After the grant, the 9-month opposition period begins, in which a third party may initiate opposition proceedings to the granted patent, based on arguments and documents of prior art relevant for the purposes of patentability. An opposition (depending on its concreteness) may lead to the limitation, revocation, or maintenance in an integral form of the granted patent. An appeal against a final decision of an opposition proceeding may be submitted to an internal Board of Appeals of the Office.

Validation abroad
Generally within three months from the date of grant of the European Patent, the owner must then validate the patent in the designated countries: thanks to the London Agreement, some countries, depending on the filing language of the European Patent, do not require the filing of the translation of the patent or they require the translation of the claims only. In other countries, it is necessary to file the translation of the entire patent.

Rights:
Right to exclusively produce and commercialise in the country where the patent has been filed, that is exclusive rights of authorship and ownership. Right to prohibit others from producing, selling, advertising, using.

European Patent Office

What is the European Patent with Unitary Effect
The Unitary Patent is an industrial property title granted by the European Patent Office (EPO) and will allow you to simultaneously obtain patent protection in the participating EU countries that have ratified the Agreement on the Unified Patent Court.

The Unitary Patent does not replace but complements the European Patent, which will remain a viable way to obtain protection in countries not participating in the Unitary Patent or a valid way to obtain a foreign national patent in a country of special interest or non-EU countries, such as Switzerland, the United Kingdom or Turkey.

Differences compared to the European Patent
The Unitary Patent is a single title valid in the participating EU countries and does not require, unlike the European Patent, a validation phase in each state to obtain protection through validation and obtainment of a national patent.

Consequently, the jurisdiction for infringement decisions is no longer with the national courts and it is referred to the newly established Unified Patent Court (UPC).

Advantages and disadvantages compared to the European Patent

Advantages:
– payment of a single renewal fee directly at the EPO;
-fewer charges for translations (if a lot of states are designated in the case of a European patent);
-possibility of infringement actions at the Unified Patent Court (UPC) with effect in all participating countries.

Disadvantages:

– in the case of invalidity actions against one’s own patent, while in the case of the European patent a competing company has to initiate an action for each validation country, with the unitary patent a single action before the Unified Patent Court is sufficient with the consequence that a single adverse decision has effect for all countries;
– this being a unitary title, a bundle of national patents is not obtained as for the European patent and, therefore, it is not possible to assign a foreign national patent from one state in the patent bundle to a third party while maintaining ownership of the other foreign national patents.

Current status and effective entry into force
– The participating countries will be 25, but at present only 17 have ratified the agreement: Italy, France, Germany, the Netherlands, Belgium, Luxembourg, Malta, Sweden, Denmark, Finland, Estonia, Latvia, Lithuania, Slovenia, Portugal, Austria, Bulgaria, Romania.

The following have not yet ratified the agreement: Poland, Cyprus, Greece, Czech Republic, Slovak Republic, Hungary, Ireland.

This implies that the granted Unitary Patents will have a different territorial scope of protection depending on the number of participating countries at the time of granting and this scope will remain invariable for the entire duration of the patent.

Options available to holders of European patents already granted
European Patents already granted with a filing date after March 1^st, 2007, will be automatically considered to fall under the jurisdiction of the Unified Patent Court for the states in which the European Patent has already been validated.

If you do not wish to bring your industrial property titles under the jurisdiction of the Unified Patent Court, you have to submit an explicit request for exclusion from the new system.

Options available to holders of non-unitary European Patent applications under examination
European patent applications under examination and with a filing date after March 1^st, 2007 will be automatically considered to fall under the jurisdiction of the Unified Patent Court.

It will be possible to delay the granting of a patent application until the entry into force of the UPC in order to request the granting of the European Patent with Unitary Effect.

If you do not want your European patent application to automatically enter the Unitary Patent system, you have to submit an explicit request for exclusion (OPT-OUT).

What to do if you are the owner of a granted European patent or of a European patent application

The owners of European patents granted and with a filing date after March 1^st, 2007 have to

• decide whether to bring them under the jurisdiction of the Unified Patent Court or exclude them by filing an “OPT-OUT” request.

The owners of pending European patent applications have to:

• decide whether to bring them under the jurisdiction of the Unified Patent Court or exclude them by filing an “OPT-OUT” request;
• consider, in particular for applications that are close to granting, whether to submit

request to delay the granting until the effective entry into force of the Unitary Patent in order to request the granting of the title with unitary value.

Unified Patent Court

International Patent
The International Patent system PCT (Patent Cooperation Treaty) originated from the Patent Cooperation Treaty (Washington, June 19^th, 1970) and allows you to apply for patent protection in more than 100 European and non-European countries including the United States, Japan, Canada, China, and all major industrialized countries through the WIPO (World Intellectual Property Organization). The procedure involves the submission of a single application, a preliminary international search and subsequent preliminary examination report, and subsequent national/regional phases by the Patent Offices of each designated state.

Priority
Within 12 months from the filing date of a national patent, its validity can be extended internationally by claiming priority.

Duration
It depends on the legislation in each country.

Foreign national patent
It is obtainable in countries that have reciprocal relations with Italy and that accept foreign applications for patents for invention. It is possible to file, for example, a European Patent or an International Patent to take advantage of centralized examination procedures, the result of which is then recognized by the national offices of the states in which protection is sought by means of an extended national patent.

Duration
It depends on the legislation in each state.

Rights
Right to produce and commercialise exclusively in the country in which the patent has been filed, that is, exclusive rights of authorship and ownership. Right to prohibit others from producing, selling, advertising, using.

https://uibm.mise.gov.it/index.php/en/documents