FILING REQUIREMENTS

Requirements for filing a patent application in Italy

A Power of Attorney, simply signed at the bottom by the applicant(s),without legalization is required. A separate Power of Attorney is necessary for each application unless the Attorney has been granted a General (or Cumulative) Power of Attorney.

Full name of the inventor(s) who must be designated by law.

Drawings (if necessary). The drawings may be filed in a temporary format but definitive drawings must follow in the proper format within two months from the filing date of the application in Italy.

If the priority rights deriving from a foreign patent application are to be claimed (Paris Convention), an authentic copy of the foreign patent application must be filed with the Italian Patent and Trademark Office, along with an Italian language translation, within six months from the filing date of the application in Italy. This term is non-extendable.

In the event that a patent application is filed in Italy with a priority rights claim (Convention cases) and the applicant for the Italian patent is different to the holder of the foreign priority application, an assignment of priority rights is required, which must be signed before a Notary Public on a date prior to the filing date of the Italian patent application or otherwise must include an express clause establishing that the rights have effect from a date prior to the filing date of the Italian patent application.

The signature of the Notary Public must be legalized by the Italian Consulate or by so-called “Apostille” (Hague Convention) in lieu of Consular legalization. There is no fixed deadline for the filing of this particular document but it is advisable to file it within the same six month term for filing the Priority Document. If such a document assigning the priority rights is not filed, the priority claim is rejected.

The details of the costs which will be borne for the filing of an Italian national patent include the following items:

- preparation of the application documents and payment of filing duties;
- eventual translation of the entire text into the Italian language
- stamp duty on all of the application documents;
- formal claim of priority (where applicable);
- filing, stamp duty and fiscal registration of the Assignment of Priority Rights Deed (where applicable) with the Registry of Deeds;
- cross checking the priority document and the text of the description of the Italian national patent application, Italian translation (where the texts do not correspond), certification of the translation and filing of the priority document;
- filing of the priority document or the formal drawings or the Power of Attorney if filing thereof takes place separately from the filing of the application;

Since no novelty examination is carried out in Italy, there is no need to file a request for examination. Consequently, the examiners carry out an administrative and limited technical examination so the possibilities of objections by the Examiners on the merits of the patent are scarce. In the absence of objections, the only additional cost to be budgeted for until the patent is granted is relative to receiving, stamping, checking and forwarding the Patent Registration Certificate once it has been granted.

In Italy, no publication fees are payable upon grant.

Italian Patent Law provides that the exclusive rights deriving from a patent are conferred with the registration thereof but the legal effects run from the date when the application is made available to the public, that is, after eighteen months from the filing date or from the priority date (if claimed) or ninety days from the filing date, if a request to that effect is expressed upon filing the application.

Italy may be designated in both a European Patent Application and in an International Patent Application (PCT). It should be noted, however, that an Italian national patent may not be obtained directly from an International PCT application: the designation of Italy in an International PCT application can be formalized only through the European regional designation (EPO).