FAQs on Italian Patents

Italian Patent FAQs

Can patents cover any type of invention, including software, business methods, and medical methods?

• In Italy, business methods and medical procedures are not patentable. Software is not patentable per se, but Italy follows the EPO's examination principles, according to which software can be patented if it has technical characteristics. In order to have technical characteristics, a computer program must exhibit a further technical effect when it is run on a computer. A further technical effect is a technical effect that goes beyond the normal physical interaction between the program (software) and the computer (hardware) on which it runs. That is, computer-implemented inventions are patentable, provided that other legal requirements are met.

Who can own patent rights to an invention: a company employee, an independent contractor, multiple inventors, or a joint venture? How is patent ownership formally recorded and transferred?

• The inventor has the right to apply for a patent for his invention on the basis of the first-to-file principle. In the case of multiple inventors, each inventor is entitled to an undivided share of the patent. However, if the invention is made by a company employee during the performance of his duties, the patent right belongs to the company. If the employee's salary does not include specific remuneration for his inventive activities, the inventor has the right to receive fair remuneration based on the economic value of the invention.
• If an employee makes an invention in his or her spare time, but the invention is related to his or her employer's business, the employer has the right to obtain the patent right for the invention first.
• If an independent contractor is commissioned to make an invention, the invention belongs to the commissioning party.
• According to the relevant provisions of Italian patent law, changes in patent ownership must be recorded with the Italian Patent and Trademark Office and a copy of the signed transfer agreement must be provided.
• Inventions created by employees of universities, public research institutes and certain hospitals while performing their duties are referred to as "IRCCS" ("Institute of Research, Hospitalization and Health Sciences") and are treated differently. In this case, the inventor must notify his employer of his invention. In principle, the invention belongs to the employer. However, if the employer does not file a patent application within six months, the inventor may file a patent application. This period can be extended by three months.

How long does it usually take to obtain an Italian patent and how much does it usually cost?

• The average time it takes to obtain an Italian invention patent, from new application to grant, is about two years. The average cost of drafting, filing and prosecuting an Italian patent is about €10,000.

Can accelerated examination be requested for Italian invention patents?

• Yes. If a patent lawsuit occurs in connection with a patent application and the patent application is still under examination, the patent applicant can file a request for accelerated examination and request a grant through the fast track procedure. The patent application that passes the accelerated examination will be granted in about two months.

What must be disclosed or described in a patent application about the invention? Are there any specific guidelines to follow or pitfalls to avoid when deciding what to include in a patent application?

• The general rule is that a patent application must contain enough information to enable a skilled person to carry out the invention. In addition, it must describe the invention to distinguish it from the prior art and must describe in detail at least one specific embodiment, but not necessarily the best embodiment.

Must inventors disclose prior art to patent examiners?

• No, the inventor is not obliged to disclose existing prior art.

Can a patent applicant file one or more subsequent applications to pursue additional claims to the invention disclosed in its previously filed applications? If so, what are the applicable requirements or limitations?

• There is no specific procedure for filing additional claims to the invention disclosed in the earlier application. The only way to do so is to file a subsequent application claiming priority from the previous application.

Can I appeal a refusal decision of the Italian Patent Office to the courts?

• A party dissatisfied with a refusal decision by the Patent and Trademark Office may appeal to the Board of Appeal, an independent body with jurisdiction to review decisions of the Patent Office. The Board of Appeal’s decision is subject to legal review by the Italian Court of Final Appeal, the Supreme Court of Cassation.

Does the Italian Patent Office have an opposition mechanism?

• No, there is no opposition or opposition procedure under Italian patent law.

Does the Italian Patent Office provide any mechanism to resolve priority disputes between different applicants for the same invention? What factors determine who has priority?

• The decision will be made by the Italian courts, not the Italian Patent and Trademark Office. The basic principle is that the earlier-applied patent has priority, unless the first applicant has acted in bad faith, such as illegally obtaining or using information related to the invention.

Does Italian patent law provide for a procedure to amend, review or revoke a patent? Can the court amend the patent claims during litigation?

• The Italian Patent and Trademark Office does not participate in the reexamination or revocation of patents, but before the patent is granted, the patentee can modify the patent application by supplementing or adding embodiments or limiting the description and claims. After the grant, the patentee can only limit the scope of the patent claims.
• During the patent examination process, if the patentee believes that the original claims are invalid compared with the prior art, he or she may submit a list of restrictive claims to the court. The court may also make a judgment declaring the patent partially invalid, limiting the scope of the patent.

How is the protection period of Italian invention patents determined?

• The protection period of Italian invention patents is 20 years from the date of application.