ROME - Italy has introduced prior art searches for all national patent applications, and entrusted the European Patent Office (EPO) with carrying them out and producing a search report and opinion.
According to the Italian Patent and Trademark Office (IPTO), searches took off on July 1, 2008, at no cost for the applicant, and with a further advantage if the Italian application is used to apply for a European patent.
Pursuant to an agreement between Italy and the EPO, in October 2007, the Italian Ministry of Economic Development published a decree officially appointing the EPO as the authority “in charge of performing searches for prior rights concerning applications for patents for invention filed with the IPTO.”
Accordingly, Italian patent applications have been subjected to prior art searches with effect from July 1, 2008. Within 9 months of the Italian application date, the EPO will send to the IPTO a search report and a written opinion in the English language. The IPTO will forward the documents to the applicant.
The prior art search will not involve any additional fee for the applicant for an Italian patent. On the contrary, where an applicant for an Italian patent should subsequently choose to file an application for a European patent, either directly or through the international procedure, the search fee would be reimbursed by the EPO to the applicant directly (and therefore not to the Italian administration) on the condition that the application filed essentially coincides with the Italian application which has already undergone the prior art search.
Nonetheless, the entry into force of this new procedure also means that a so far unapplied rule will start to be applied, requiring payment of a fee of 45 Euros for each claim in excess of 10. Furthermore, a payment of 200 Euros will be required if no English translation of the claims is produced. In fact, the EPO needs at least the claims in the English language to perform the search. A translation into English of the whole text of the application is optional, but may be advisable.
The IPTO has specified that this procedure will be carried only for Italian applications that do not claim any priority. If this condition is satisfied, any non-Italian applicant may also benefit from this procedure.
Advantages of this new procedure can be therefore summarized in:
• Obtaining a free prior art search done by qualified EPO personnel.
• Obtaining a refund of the EPO search fee, if a subsequent European patent application claims priority from an Italian application that has been searched by the EPO and is not different from it.
• Obtaining an Italian national filing that may be used for claiming priority for subsequent filings in any Paris Convention country.
• Obtaining an Italian patent when the application is granted.