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Frequently Asked Questions


Invention patents

What is a patent and how is it made?

A patent is a document certifying that exclusive rights have been granted for the enjoyment and economic exploitation of an industrial invention in a nation.

The patent grants its owner the right to prevent others from making, using, trading, selling or importing the patented item. 

Therefore the patent is a technical-legal text that consists of a technical description that is used to illustrate the invention and contains a series of "claims" that define the scope of protection and exclusivity conferred by the patent. The patent may also be supplemented by illustrative figures of the invention that are only for the purpose of information and do not provide any exclusive protection, the legal protection being defined solely by the claims.

What are the requirements to patent an invention?

Generally, in order to be patentable, an invention must meet the following requirements:

  • it must involve an element of novelty (novelty), or should have some new feature that is unknown in its technical field and is considered “state of the art” or “prior art” (prior art) (in this regard it is important to note that even a public disclosure of the invention by the same inventor or assignee before the patent application is registered removes the novelty and constitutes the grounds for nullity of the patent),
  • it must involve some inventive activity (inventive step), this means it should have something which is seen as an invention by someone who is skilled in that area of technology (skilled man),
  • it must be susceptible of industrial application (industrial applicability)
  • it must be the solution to a technical problem,
  • the invention must be lawful, or not contrary to public order or morality.

What is not patentable?

In several countries, scientific theories, mathematical formulas, plant or animal varieties, discoveries of naturally substances, business methods and methods for medical or veterinary treatment are not patentable, as opposed to medical products that can be patented.

How long does a patent last?

It lasts 20 years from the date the application is filed, on the condition that the annual maintenance fees required by the government are paid. When the patent expires, i.e. when the period of protection ends, the invention becomes public domain or the inventor loses exclusive rights over the invention and the same can be commercially exploited by anyone who may be interested.

What rights does the patent holder acquire?

Within the boundaries of the state within which the patent is valid, the patent holder can:

  • decide who may and may not use the patented invention during the period of protection;
  • may allow third parties to use the invention, based on the conditions established by the agreement and using a license;
  • sell his right to a third party, who in turn becomes the patent holder.

What is the average cost to file a patent?

The cost for filing a patent application ranges from a few thousand euros for a single country to tens of thousands of dollars for more countries. For a European patent, the cost varies according to the number of States you choose. Since it is not necessary to validate it in all the States, you can choose only those States where you expect to find a market for the product being patented.

How useful is the anteriority research of a patent?

The registers reserved for protection are huge databases that contain an extraordinary amount of information. According to a rough estimate, over 60 million patents are registered worldwide that contain more than 80% of the world's technical knowledge.

A patent search helps to determine if what we want to do violates the right of an already existing patent or if our idea is new and therefore potentially patentable. 

A search can also be a simple monitoring tool used to evaluate the competition in a particular sector and be of great help during research, development and creation, helping to prevent time wastage and useless duplication.

When is the right time to contact a patent attorney?

A patent attorney must be contacted as soon as the research and development phase has ended and the idea has taken shape or even preferably in advance so that the patent application can be filed as soon as possible, before the product is offered to the public.

What if business collaborations require that information be kept confidential?

If there are business collaborations (e.g. in the case of projects outside the company), it is very important to regulate the relationship through confidentiality agreements that are specifically drafted to maintain secrecy among the companies from the legal point of view.

Can anyone draft a patent application?

The draft of the patent must be prepared following the specific regulations issued by the Patent Offices of the national and international governments responsible for examining the application. Therefore it is important to contact a licensed patent attorney so that the wording of the patent application is appropriate and does not harm the invention.


Trademarks

What can be registered as a trademark?

Any sign that can be graphically represented and is able to distinguish the goods and services of one firm from those of the others can be registered as a trademark. Specifically:

  • words or word combinations,
  • images,
  • figures,
  • symbols,
  • graphics and drawings,
  • letters,
  • digits and combinations thereof,
  • color shades,
  • sounds, etc.

What is the function of a trademark and what requirements must a trademark possess?

On one hand the function of a trademark is to allow buyers to immediately know who has manufactured or marketed the product and on the other hand, to allow the seller to be recognized by his customers. A trademark must therefore have the following requirements:

  • distinctive: signs consisting of generic denominations of a product or service or descriptions and signs that indicate the intrinsic qualities of the product or service cannot be registered;
  • novelty: it must never have been used (or registered) previously by others as a trademark, company, emblem, etc. for goods or services identical or similar to those being registered;
  • lawfulness: it must not be contrary to the law, public order and morality.

What do strong trademarks and weak trademarks mean?

It is common to distinguish between strong and weak trademarks based upon their individuality. A strong trademark is boldly original and noticeably distinctive, while a weak trademark is less original but minimally distinctive enabling it to be differentiated and protected.

For which type of product is a trademark valid?

A trademark is registered for the classes of relevant goods and services and to protect the exclusive use of the distinctive sign for the selected classes. The International Classification of Goods and Services contains 45 classes and it is important to take into account the classes of products (or services) of current and future interest.

What rights does the proprietor of a trademark acquire?

The trademark, within the boundaries of the State it is valid, guarantees the owner the right to prevent third parties from filing identical or similar trademarks following his own, for identical or similar classes of goods or services, or from using them without the owner’s consent. This enables the owner to distinguish his products clearly and unmistakably from those of his competitors.

How does one decide whether to register a trademark as Italian, EU or international?

The registration of a trademark in different geographical areas (national, EU and international) depends on the extent of its market. It is necessary to clarify that a single trademark is not valid worldwide, and how in each case, it is possible to obtain protection in individual, commercially interesting countries using national filing procedures.

The application for an Italian trademark must be filed at the IPTO (Italian Patents and Trademarks Office based in Rome) which carries out a formal investigation and, if the result is positive, registers the trademark. 
The legal protection offered by Community Trademarks is valid for all European Union Member States and is obtained through a single filing and registration procedure. 
Instead, through the International Trademark it is possible to extend protection to one or more countries that are part of the Madrid Agreement International Registration of Marks (Madrid Protocol). Today more than 80 countries have joined including the European Union, United States, China, Russia and Japan.

What is the difference between a filed and a registered trademark?

The trademark begins its existence when an application for registration is filed at the authorized office. The trademark is registered once it passes the validity test. The validity tests vary from country to country. For example in Italy, the trademark has to undergo a formal investigation, unlike many other countries where validity tests involve merit. During the examination phase, official examiners may raise objections to which one can respond by taking appropriate legal action to obtain the trademark from the qualified authority. The protection of a trademark in Italy and in most foreign countries begins from the date the application is filed, availing of the so-called "interim protection".

What is the difference between the symbol "R" of registered and "TM" (Trade Mark)?

The addition of the ® symbol besides the trademark serves as a reminder that it is a distinctive registered sign, therefore the symbol ® must not be placed next to a trademark whose application has only been filed and you must wait until the registration certificate has been granted by the qualified authority. 
Pending the actual registration it is possible to place the symbol ™ alongside the trademark (from Trade Mark in English).

How can trademark rights be enforced in case of infringement?

In case of infringement, if the trademark has been registered, it is often sufficient to make the offender aware of the exclusivity right to encourage him to discontinue the unlawful use of the trademark and compensate the damage caused. If the warning is not sufficient, legal action can be taken based on the registered trademark, requesting the Court to order immediate cessation of the unlawful use of the trademark.

How useful is anteriority research before a trademark is registered?

Anteriority research of a new trademark is essential to determine whether it has already been registered and, if so, for which categories. Anteriority research is furthermore advisable before using the trademark, to help decide advertising investments and to avoid getting involved with a trading partner accused of counterfeiting.

How to choose the class in which to register your trademark?

In order to protect your rights better, when a trademark is registered, you must take into consideration the classes related to products (or services) of current interest and also those that could be of interest in the near future. The list of products and services claimed at the time the application is filed should be continuously monitored to assess the suitability of the protection and, if necessary, additional applications must be filed to obtain protection for new expanding areas of production and marketing.

What if a trademark undergoes subsequent modifications?

If, as time passes, the graphical or figurative version undergoes changes or if you are instead, initially owners of just a word mark and the sign later acquires a distinctive design, it is advisable to evaluate the updated version of the trademark with the help of your consultant, to assess whether it is suitably protected or whether it is necessary to supplement the protection by filing new applications.


Design (Designs and Models)

What are the requirements for filing a design?

A filed design application is considered valid if it meets two basic requirements:

  • novelty i.e. the same aesthetic form has not already been used by third parties in the country or world, in accordance with national law;
  • individuality i.e. this aesthetic form is different from already existing forms because of fairly distinctive details.

At Community level, the debate on the validity of the design is left to the concerned third parties, who can take appropriate legal action against the registration through opposition or nullity proceedings.

How long does a Community design last?

A Community Design is valid for five years from the date the application is filed and can be renewed every five years, for a total of 25 years.

What are the territorial areas in which the design can be filed?

The design can be registered:

  • at national level, through individual applications in various countries and in accordance with individual national laws;
  • at Community level, with a single application at OHIM (The Trademarks and Designs Registration Office of the European Union) valid in all EU countries;
  • at international level at WIPO (World Intellectual Property Organization), by filing a centralized application, which is cost-effective and based on an International Convention of which more than 50 countries are members.

Is it possible not to immediately make your design public?

Applicants who do not wish to immediately make their design public may exercise the right to postpone the release. The delay in release can last up to a maximum of 30 months from the date the priority is filed.

Is the protection of a design related to its size?

This protection does not depend on the size. A scale model enjoys the same protection as its original. The attached designs do not indicate the size.