Patent protection for the preservation of technical and technological innovation

A patent is a new and original solution of a technical problem, compared to the state of the art.

Inventions in any field of technology may be the subject of a patent for invention, whether they are new, involve inventive activity, and lend themselves to industrial application.

New designs capable of conferring special efficiency or convenience of application or use on machines or parts thereof, as well as tools or instruments, may be protected as a utility model patent.

Non-patentable subject matter includes all scientific discoveries, theories, mathematical methods, plans, principles and methods for intellectual activity, for play or for commercial activity, computer programs and presentations of information, per se considered; methods for surgical or therapeutic treatment of the human or animal body and methods of diagnosis, applied to the human or animal body, plant varieties, and animal breeds and essentially biological processes, of animal or plant production, plant varieties recorded in the National Register of Biodiversity, of agricultural and food interest, or derived from productions distinguished by protected designations of origin, protected geographical indications or traditional specialties and from which traditional agri-food products are derived.

It is not possible to protect as utility models all industrial processes, chemical, biotechnological, and electronic inventions, which can be protected as patents of invention.

The patent confers on its owner the exclusive right to implement the invention and exploit it economically in the territory where the invention is protected, as well as the right to prohibit third parties, except with its own consent, from producing, using, marketing, exporting, or importing the patented product or a product directly obtained by the patented process.

The exclusive rights inherent to patents of invention have a maximum duration of 20 years (subject to the extension of the term in the case of a supplementary protection certificate), or 10 years in the case of utility model patents; they are obtained by grant and maintained by the payment of annual or five-year maintenance fees.

An invention is considered new if it is not included in the state of the art, which consists of everything that has been made accessible to the public in the territory of the state or abroad, prior to the date of filing of the patent application, by written or oral description, use or any other means.

An invention is considered to involve inventive activity or originality when it is not evident from the state of the art to an expert in the relevant field.

An invention can have an industrial application if the related object can be manufactured or used in any kind of industry, including agricultural industry.

Finally, as for lawfulness, inventions whose implementation is contrary to public policy or accepted principles of morality cannot be the subject of a patent.

The patent is a technical-legal document that allows, from a technical point of view, to understand the scope of the invention and, from a legal point of view, to identify the scope of protection. The drafting of the patent text is done in consultation with the client, paying special attention to the wording of claims and the sufficiency of description. The patent document consists of several parts: title, abstract, description, drawings, and claims.

• The title, which is relevant for classification purposes, should be brief and relevant to the content of the description, not exceed 500 characters, and not contain fancy terms or trademarks.
• The summary is intended to briefly illustrate the technical nature of the invention and must not exceed 150 words.
• The description must define the claimed invention so as to distinguish it from the known art; it must be detailed and written in complete, clear, concise, and precise terms, such that any expert of the art can implement the invention. The description must set forth in full a specific form of embodiment of the invention, such that the claims can be defined and, if necessary, reformulated during examination.
• The claims pertain to the technical features of the invention and define the scope of patent protection.
• Drawings must made in the various views: perspective, frontal, top, section, and of individual parts, with a very brief written explanation. They are not mandatory but may be useful or necessary to better understand the description and claims.

According to the client’s requirements, including financial considerations, we define the geographical scope of protection and extension strategy, taking into account the field of the invention, the competition, the business plan, the countries of current and potential interest in the production, promotion, and commercialization of patented products or processes, in order to identify the optimal protection strategy.

We assist and represent our clients in the patent granting procedure in Italy and abroad, starting from the verification and prior evaluation of the proposed technical solution in consideration of the patentability requirements, such as novelty, inventive step, industrial application, and lawfulness, through preliminary prior art searches and patentability opinions carried out at the client’s request. We develop with the client the search strategy to better define the scope of patent protection and attempt to minimize the risk of possible infringement of exclusive rights of third parties. We follow all stages, from filing to prosecution of the application, up to grant; we reply to any objections or remarks issued by the Patent Offices; we analyse the search report, collaborating with the client in the drafting of any responses, aimed at better specifying or limiting the scope of the patent, always from a conservative point of view and in the light of any prior art that has emerged.

We deal with the extension of protection of patents at European, International, or foreign National level, in accordance with laws and regulations and international treaties.

We manage the granting procedure of Italian patents, European patents, PCT and EURO-PCT international patent applications, also dealing with their defence in the context of any active oppositions against patents of third parties and passive oppositions proposed by third parties, or in the context of invalidation actions, both active and passive, in Italy and abroad.

We support the client in setting up:

• the patent search strategy aimed at verifying ‘Freedom to Operate’ (FTO) opinions;
• to identify any patent rights that may interfere with or hinder the freedom of implementation of the proposed innovative technical solution;
• to direct research and development towards the implementation of unpatented solutions, in order to limit the risk of infringement of third-party rights.

We activate patent surveillance services in the technical field of interest and on the activity of competitors, protecting our clients’ innovative activity and patents.

• We support our clients in the due diligence, valuation, and economic valorisation of their patents, in collaboration with trusted outside attorneys and other experienced professionals in the field.
• We take care of the drafting of all types of contracts related to our clients’ intellectual property rights, in consultation with trusted outside attorneys.
• We assist our clients in enforcing their patents in active oppositions or infringement actions to be brought against third-party patents interfering with the scope of protection of our clients’ patents.
• We support our clients in the administrative, civil, criminal extrajudicial, and judicial defence of their patents rights, in collaboration with trusted outside attorneys.