News Patents and designs 2008

Priority Art Search on new Patent Applications

As from July 1, 2008, patent applications filed in Italy, with no priority claim, will be subject to a prior rights search. The search will be carried out by the European Patent Office pursuant to an agreement that was signed between the Ministry of Economic Development (General Division for Industrial Property - Italian Patent and Trademark Office) and the European Patent Organisation.

Under the terms of the agreement, the European Patent Office has undertaken to prepare and send a search report to the Italian PTO, within nine months from the filing date of the application, in which documentation relating to pertinent prior rights is provided, accompanied by a written opinion on the novelty and inventiveness of the invention and, therefore, its patentability. The Italian Patent and Trademark Office has undertaken to forward the report and written opinion, without delay, to the applicant, who will then have the possibility to modify the patent application, or present arguments on the search report within 18 months from the filing date of the application (date on which the application is made available to the public). The prior rights search will not be carried out if the content of the application is deemed such as to render the search useless or impossible (for example, if the object of the application is evidently well known, precluded from patentability by law or unclear).

In order to ensure that the patent application can be submitted for a prior rights search by the European Patent Office, it must be filed along with an English language translation of the claims or - alternatively - a fee of Euro 200 must be paid.

The cost of the search (approximately 2,000 Euro) will be borne by the Italian Patent and Trademark Office.

It is foreseen that the Italian Patent and Trademark Office will subsequently examine the application in cross-examination with the holder and issue a decision to grant or refuse. An appeal will be possible against this decision.

The introduction of a prior rights search for national patent applications represents an important development insofar as it provides an opinion on the patentability of an invention for which protection is sought, prepared by an authority of renowned competence at a negligible cost to the applicant. If - as would appear to be the intention of the Italian Patent and Trademark Office - the search report is forwarded to the applicant before 12 months have elapsed from the filing date of the national application, applicants will have a valuable aid for deciding in advance whether to file the patent abroad within the 12 month priority period.

The new procedure renders it even more essential that a patent application is correctly drafted and that the relative claims are clear and complete, in order to ensure that the prior rights search is carried out without delay and, therefore, that the maximum benefit is obtained from this opportunity to have a reasoned and expeditious evaluation of the validity of the protection requested.


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