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.
