EPO prior art searches now apply to national patent applications

On 1st July 2008 a new search and examination regime for patent applications entered into force, according to which an Italian application filed on or after that date will be subject to a search report and patentability opinion issued by the European Patent Office (EPO), and to a further examination on the merits by the Italian Patent and Trademark Office (IPTO).

Implementing the new regime

The agreement with the EPO was signed on 18th June and shortly afterwards a ministerial decree entered into force laying down regulations to implement procedures for the filing and prosecution of applications subject to search.

The new regime applies to any admissible first application for an invention filed on or after 1st July 2008 which does not claim priority, irrespective of the nationality of the applicant. Therefore, utility model applications are excluded from the search.

In order to be considered admissible, a national application shall include:

  • information identifying the applicant; 
  • a description and one or more claims in Italian; 
  • a translation of at least the claims in English; and 
  • evidence of payment of the relevant filing fees.

An indicative International Patent Convention classification (ie, section, class and subclass) is also recommended.

An Italian application may be filed in any language, but a translation into Italian must be provided within a term to be established by the implementing regulations of the Code of Industrial Property, which are expected to enter into force within the next few months. According to the draft regulations, such a term would be two months from the filing date.

Along with a filing fee of at least €50, a claim fee applies to the 11th claim and each subsequent claim, and a translation fee (currently €200) must be paid if the applicant does not provide an English translation of the claims within two months of the filing date. No actual search fee is due, as it will be borne by the IPTO. The IPTO will automatically provide a translation of the description, thus giving the EPO examination division in charge of the case a complete English specification of the invention, on the basis of which a reliable search may be carried out according to EPO guidelines.

None of the above fees are due if the applicant is a university or a public research authority.

Under the new procedure, the appointed Italian examiner will carry out a first screening before passing the application to the EPO, in order to check whethert he claimed subject matter:

  • is excluded from patentability (and thus will not even be searched by the EPO); or
  • belongs to common general knowledge.

The search report, together with a non-binding patentability opinion, will be provided by the EPO in advance of the priority deadline and within approximately seven to nine months of the filing date.

The extended European search report, together with any amendments to the description and/or claims and any supporting argument commenting on the report, will form the basis for a subsequent examination stage before the IPTO. This examination will start after publication of the application, which occurs 18 months after the filing date.

Since the guidelines for examination are still under preparation, it is not yet known how long the examination stage will take and thus how long it may take for a patent to be granted.

Benefits for Italian and foreign businesses

The new system is attractive because of the lower costs incurred compared with an international or European filing, mainly due to the fact that the actual search fee is borne by the IPTO.

Moreover, if an applicant receives a favourable report and chooses to pursue European protection or the Patent Cooperation Treaty route where the EPO is the search authority, it can likely obtain a whole or partial refund of the search fee payable to the EPO, to the extent to which the EPO can use the earlier search report.

The new procedure may be of interest to both Italian and foreign applicants. In particular, it may allow non-European applicants to obtain a European search report without incurring the heavy fees of a first European or Patent Cooperation Treaty application.

Foreign applicants usually drafting a patent application in their own language will have to provide an Italian translation thereof, but this apparently added cost may be saved in a future national prosecution. Italy has not yet ratified the London Agreement and it appears unlikely that this will happen in the short term. Therefore, if a subsequent European application is filed based on an Italian priority application and Italy is designated, the whole text of the granted European patent will have to be translated into Italian for the purposes of national validation. Thus, a foreign applicant could, to a large extent, use the original Italian text of the priority application and would need to review only those parts which had been modified during the prosecution stage.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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