Preparation and filing of patent applications
We have acquired a long and extensive experience in drafting patent applications that meet the formal and substantive requirements in all countries of the world, with attention to the continuous evolution of the rules and case law on the interpretation of patents. A team of attorneys specialized in the respective fields of technology and science allows us to draft patent applications in any sector of industry.
Prosecution of patent applications
The solid experience, skills and technical knowledge of our attorneys allow us to advise on the best strategy for the prosecution of applications to reduce the number of office actions and obtain solid patents with a wide scope of protection in the relevant market territories.
Extension of patent applications
Patents are rights limited to the territory of a state. To be protected in several countries, patent applications need to be filed in each of them. Each country has formal or substantive examination procedures in accordance with national law. Many countries are members of international conventions and treaties that provide for unified patent filing, examination and grant procedures, in whole or in part, with the resulting patents being valid rights in each national territory. The European Patent Convention, to which Italy is a party, provides for a single patent application and a unified examination and grant procedure.
The granted European patent can be validated in all or part of the 38 contracting states, in the extension states and in the validation states. National validation of the granted European patent requires formal steps and the translation of the patent into the official language of the country concerned, where required by the local law.
The Eurasian patent allows to obtain a patent valid in 8 Eurasian countries with a single filing, examination and grant procedure.
Similar procedures are provided for ARIPO for 19 English-speaking African countries and OAPI for 17 French-speaking African countries.
The Patent Cooperation Treaty (PCT) allows to obtain provisional protection in 152 countries around the world by filing a single patent application. Provisional protection will only be confirmed after the patent is granted in each of the selected countries.
The procedure under the PCT system requires that, following the patent application, one of the Offices in charge, known as “Searching Authority”, carries out a search and issues a search report with a patentability opinion. The phases common to all countries include the publication of the international patent application and, at the request of the applicant, a joint international examination phase carried out by a competent Office known as “Preliminary Examining Authority”.
Once the international phase is over, it is necessary to enter the national phases in each country; the respective Patent Offices will carry out independent examinations, integrating the search where applicable, and taking into account the findings of the international phase. It is worth noting that, among the national phases, it is possible to select not only individual countries but also regional organizations such as the EPO, the EAPO, the ARIPO and the OAPI.
We assist our clients in selecting the most suitable strategy for their specific needs. In any case, whatever choice is made, the quality of the attorneys who manage applications and patents abroad at the national level plays a very important role. In this context, we are proud to rely on a dense and trusted network of local agents operating before intellectual property offices around the world. This network has been built up over decades and its quality is constantly monitored both through the review and evaluation of the activities carried out, and through periodic direct meetings.
We jointly evaluate a targeted protection strategy, identifying the countries and products/services to be protected in accordance with the applicable regulations. From a territorial point of view, a trademark can be protected through national, European or international filings or through a combination thereof. Identifying the most appropriate strategy simplifies the administrative filing process and minimizes costs.
The protection obtainable through the filing of designs can be extended, in many jurisdictions, also to parts of products and not only to the entire appearance of the products. It is therefore essential to define an appropriate filing strategy that protects not only the overall appearance of finished products, but also the appearance of their essential features. In this way, it is possible to prevent third parties from adopting innovative and highly appealing stylistic elements.
However, in the different countries around the world, the requirements for representation and registration of designs as well as the formal registration process are often different.
A careful preparation of design applications considerably facilitates the registration procedure in different countries of the world, significantly reducing the associated costs and limiting the risk of rejection. A combination of legal and procedural knowledge is therefore fundamental to meet the different validity requirements of the various jurisdictions and to obtain, at the same time, a wide and adequate level of protection in the respective countries.
The recent accession to the international design system by countries of high interest (e.g. Russia, USA, Japan, Korea, Canada in addition to European Union, Switzerland, Norway and the United Kingdom) makes the use of the international design system particularly attractive.
We assist our clients at every stage of the preparation and filing of the application and throughout the examination, both formal and technical, up to the grant of the right.
We can also assist our clients in oppositions to grants of plant variety rights of third parties by raising objections through our attorneys who, in addition to being specialized in this branch of intellectual property, have gained experience as court experts (CTU) at the specialized courts.
To obtain protection through an SPC, an application must be filed in each of the European Union member states where protection is desired.
Our attorneys have acquired extensive experience in prosecuting SPC applications in Italy and Europe as well as in litigation on the matter.
PATENTS
Patents have a limited duration, generally 20 years, during which they are subject to payment of a maintenance fee, which is annual in most countries. Failure to pay the maintenance fee causes the patent to lapse. Patents are not renewable beyond the expiration date. With our advanced computer system, we monitor all deadlines and assist our clients by carrying out the necessary tasks to maintain their patents in force.
DESIGNS
Designs have a limited duration, generally from 10 to 25 years; in many countries, the initial duration is 5 years, and can be renewed for additional five-year periods up to a variable maximum of 25 years. Renewal is subject to payment of a fee. With our advanced computer system, we monitor all deadlines and assist our clients by carrying out the necessary tasks to keep their design registrations in force.
TRADEMARKS
Trademark registrations have a limited duration, generally 10 years. This duration can be extended for an equal duration through a renewal request, which consists in filing a specific application and paying the relevant fees under the national laws. Trademarks are renewable indefinitely; the temporal protection they provide is therefore potentially unlimited. In some jurisdictions, in addition to renewal, other intermediate activities are required to keep the trademark registration alive, such as filing affidavits after 3 or 5 years from its registration or paying taxes if the trademark has not been used.
With our advanced computer system, we monitor all deadlines and assist our clients by carrying out the necessary tasks to maintain their trademark registrations in force: filing renewal applications, drafting and filing affidavits, preliminary assessing the adequacy of proof of use of trademarks, when required.
As part of the management of intellectual property rights, we offer recordal services for the registration of transfers of industrial property rights, the assignment of such rights, and the change of ownership.
