Pedrini & Benedetti patents firm

PATENTS

Contrary to the common belief, "copying is allowed".

According to the principle of free competition, which informs (or from which it draws inspiration), the Italian Legal System and all Legal systems of the free market countries, everyone is allowed to make procedures and technological facilities his/hers. This also includes the third party functional and decorative functions almost up to unfair competition (as well copyrights, where applicable, see the industrial design section) as long as this does not confuse the consumer as regards the source of the product from one Company with respect to another.

Anyone willing to exclusively produce and sell a technology below this limit has no choice but patent the product in question. This implies requesting the National Legal System and/or the Supranational Organisations designated to issue a certificate constituting a monopoly, i.e. the patent. Within a given territory, and on condition that the law, regulatory, legal procedures and relative tax requirements are met, a patent guarantees temporary monopoly for the implementation of the patent object, consisting in the exclusive right of implementing it and make it subject of sale besides prohibiting third parties from using, commercialising, selling or importing it.

Services Further information

We, as a firm, offer the following dedicated professional services as regards filing, granting procedure and maintenance of patents and utility models in Italy and abroad:

Appointment for in-depth analysis of the contents illustrated in the special section, strictly reserved and limited to the professional secret regardless of the completion of the process, the characteristics of the patenting organisation related to the specific subjective characteristics of the client as well as the objective characteristics of the invention subject of the specific case.

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Preliminary assessment generally regarding compliance with the patentability requirements, or assuming the presence (unless upon the verifications provided for herein) of the novelty step.

Quotation for patent filing as well as subsequent process by estimation.

Strategic assessment as regards the feasibility, i.e. the cost/benefit ratio as a function of the maximum result at minimum costs, of priority search in this case for the preparation of patent application filing.

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As regards the aforementioned, any priority search in collaboration with external firms exclusively specialised in patent search for preparing patent filing.

Alternative or simultaneous priority search carried out in-house upon confirmation of filing order, with the aim of preparing the identification of the prior art and executing the document processes required for filing patent application.

Drafting the description/claims and processing reference drawings (when not provided by the client); collaboration with the client as regards subsequent state of progress of the document processing up to the attainment of the suitable filing text.

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Translation of the claimed text into English in case of the Italian national industrial invention patent application.

Drawing application filing forms with reference to Italy as well as tax payment and relative chamber of commerce fees and filing fees forms. In addition, we issue the client certificated proving the filing in question.

Providing the research report processed by the European Patent Office and forwarded by the Italian and Trademarks Patent Office with a copy of the priority documents possibly cited and remarks on the relative granting.

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Discussing strategies with the client as regards the completion of the national procedure as a function of the search report result.

Possible restructuring of the description text claiming the national application as a function of the search report result to overcome objections that may have been raised in this case.

At the same time, illustrating the international extension institutes should the client desire the international extension of the application, estimation of the filing and procedure costs, approximately; compared assessment of the duties, advantages and risks as a function of the search report result where applicable.

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Assessment of the conventional and/or national institute of choice (European Patent Convention, Patent Cooperation Treaty) so as to complete extension as a function of the subjective and objective meeting of the of the client demands.

Translation of description/claims, possibly with introduction of modifications based on the national patent search result, where applicable, in the required languages according to the country of extension.

Drawing application filing forms with reference foreign countries, payment of filing fees, directly or through due authorities, where deemed necessary or suitable as well as providing the client with the certifications proving the filing thereof.

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Nationalisation and regionalisation of the application whenever required by the conventional procedure.

Management of the examination procedure, analysis and study of the official actions provided for by the examiners, information and illustration to the client, discussing strategies and response contents with the client, drafting and filing responses meeting any relative administrative and possibly tax requirements.

Meeting requirements for preparing grant of patent certificates upon meeting requirements and paying relative taxes.

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Meeting patent grant nationalisation requirements when provided for by the conventional procedure, submitting the title to a network of national correspondents with the aim of meeting the validation process requirements, where provided for.

Annually forwarding to the client, in due advance with respect to the reference expiry, reminders regarding the payment of the annual fees in compliance with the deadlines to maintain the patents.

Annual payment of the fees both awaiting application and the granted patent in Italy and abroad, after notification of expiry and upon receiving instructions from the client.

 

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Invention patent or utility model

Invention › new inventions implying an inventive step may be subject of patenting. In addition, they may be suitable for industrial application as long as deemed to meet law requirements.

The industrial invention patent lasts 20 years as of date of filing of the application and it can be neither renewed nor subjected to extension of validity. The patent has validity as of the time the application is made accessible to the public.

Utility model › utility model patents address new models adapted to confer particular efficiency or comfort of application or use to machines, or parts thereof, instruments, tools or objects of general use, such as new models in particular consisting of conformation, directives, configurations or combination of parts.

The utility model patents last five years as of date of filing the application. It may be extended for another five years, hence 10 years. The patent has validity as of the time the application is made accessible to the public.

 

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Principle of territory

The common characteristic of patent institutions in any national and supranational legal system is:

  • Territoriality › i.e. the actual validity of the patent exclusively in the territory of jurisdiction of the legal system granting the patent, or the supranational organisation authorised to execute the granting procedure with references to the territories of the countries part of the aforementioned organisation.

More precisely, it is of crucial importance not to confuse the territoriality of the active validity of the patent institution, i.e. the territorial institutional limitation within which the patent executes the monopoly effects thereof, regardless of how big or small the function of the relative extension initiative (see hereinafter) is with the planetary aspect of the novelty step requirement; in other words the patent institution, if in active perspective (active approach) is limited within the territory whereas in the passive perspective (passive approach) it is affected by prior implementations on any territory on earth.

The territorial limitations, subject of the Paris Union Convention, may however be extended within a one year deadline as of date of filing of the first patent application.

Thus, the need to take patent filing initiatives in several countries / legal systems / supranational organisations, where the patent needs and/or opportunities go beyond the boundaries of a single country supplements the principle of territoriality.

 

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Law and regulatory requirements

Patents are subjected to meeting the law and regulatory requirements; these requirements are:

  • the novelty step › equivalent to the condition that something similar to the object of the patent has never been disclosed anywhere on earth prior to the date of filing of the patent application. This not even by the very inventor (this is where there arises the problem, often unknown, regarding the invalidity of the patent after reckless initiatives of disclosure of the relative object prior to filing the patent by the very applicant);
  • the inventive › or non-obviousness step, equivalent to the condition that though new, the patent object is not obvious with respect to the closest prior art, or that it cannot be obviously attacked by a man skilled in the art aware of the closest prior art under the normal professional activity thereof;
  • the industrial application step › i.e. the need that the patent object is suitable for application in any industrial sector, intended in the broad sense and also including commercial service, handicraft and farming activities.

The meeting of these requirements is subject of verification by the Legal Systems and Supranational Organisations designated for granting Patent Licenses. From 2008, even the Italian Legal System provided for that the Industrial Invention (and not utility models) Patent Applications be subjected to verification of meeting the validity requirements, conferred to the European Patent Office by the Italian Government in form of a search report, with preliminary opinion, which is sent to the applicant a few months after filing the national application. This however in time to perform evaluations regarding the validity of the invention within the annual deadline of the European union priority for the extension of the application abroad (see hereinafter).

 

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Filing documents

In the "material aspect" thereof, besides the form to be filled, the patent document is made up of a description which illustrates the prior art in the specific sector, possible limitations and drawbacks as well as the objects the inventions intends to attain, an embodiment of the invention alongside possible reference drawings, outlining alternative embodiments and advantages of the invention and the claims above all.

 

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Claims

The claims are actually the "core" of the patent. They should solely answer the "what monopoly do you want as an applicant" query in structural terms. This answer should be conceived in the most general, but not generic, terms possible so as not to introduce unnecessary limitations with respect to scope of protection of the patents. Any evaluation regarding validity and infringement of the patent shall be solely based on the claims without the possibility of modifying them unless by limiting and extracting the material already contained therein.

The claim structure conceived when drafting the document supplementing the patent application, as possibly modified after verifying compliance with the validity requirements (novelty and inventive step, as mentioned above) carried out during the examination, outlines the scope of protection conferred by the patent title. In other words, by reading the claims, the opponents of the patent, i.e. the competitors, are required (and have the right) to know the scope of protection granted by the patent to the relative owner. Likewise, the examination of the claimed text allows, compared with the implementations constituting the infringement (damaging the patent), the judge and the consultants thereof to verify whether there are actual grounds for the alleged damage and infringement.

The Italian law, just like most of the national legal systems in a more or less rigid manner, bases patent validity solely and exclusively on the claims. As a matter of fact, according to section two of article 52 of the Italian Industrial Property Code, "protection limits are outlined by the scope of the claims; however, the description and drawings are used to interpret the claims".

 

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Paris Union Convention

Functional to the needs and/or patent opportunities outside the borders of a single country, the Paris Convention for the Protection of Industrial Property, referred to as Paris Union Convention, was signed in 1883. The Convention implements the Priority Right (in the European Union) according to which an individual or legal entity owner of an industrial invention patent application (this also applies to utility models, drawings, models and trademarks), citizen of one of the member countries (recently basically all countries worldwide) has twelve months from the date of filing of the first patent for the extension of the patent application, i.e. file similar applications, in any (one or more) of the other countries member of the Convention. The effect of these similar applications (of this family of applications) shall be in force as of date of filing of the initial application, the so-called right of priority provided for by the Convention.

The European Patent Convention (the 1973 Munich treaty in force since 1977) and the Patent Cooperation Treaty (so-called P.C.T., the 1970 Washington treaty in force since 1978) are based on the aforementioned Convention.

 

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European patent

The European Patent Convention (not to be confused with the "Community Patent" still being formed, see hereinafter) allows combining patent grant in the European and neighbouring extra-European member countries, thus attaining a combined patent which should then be validated in the designated countries or in the countries subject of attaining the patent, thus actually becoming a national patent, being based on the national legal system from an administration (patent maintenance fees) and legal (infringement, validity towards action or counterclaim) point of view.

 

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Community patent

From an autonomous European Community institution as provided for by the 1975 Luxembourg Convention that has never been enacted, the "Community patent" - to enter into force soon - became an "affiliation" of the European Patent. Normally, at the end of the European Patent grant procedure, just like currently validation may be required in one or more of the Munich Convention member countries which will have combined effects in all countries of the European Union members of the "reinforced cooperation" with only one maintenance administrative regime of the Unified Court with exclusive jurisdiction (partly) thereon.

 

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International patent

The so-called "International patent", as wrongly defined, according to the Patent Cooperation Treaty (P.C.T.) is also based in the unification (partly) of the grant procedure, i.e. the unification of the filing procedure managed by the World Intellectual Property Organization, (WIPO), after which the procedure "turns" towards nationalisation and regionalisation according to the client's request. This leads to the main advantage of being to be able to exploit the right of priority with respect to a considerable number of countries in all continents through one procedure and defer the choice of the place of actual patent filing in the P.C:T. member countries (within thirty months from the end of the priority right).

 

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