The long awaited substantive examination procedure has finally arrived for patent applications filed in Italy, although available only for first national filings.
The Italian Patent and Trademark Office (Ufficio Italiano Brevetti e Marchi – UIBM) first sends the applicant, or the applicant’s agent, the European Patent Office’s search report and a patentability opinion.
Together with the search report and patentability opinion, the UIBM, by ministerial order, requires that any observations be filed within 23 months of the filing date of the patent application, at least in the following cases:
1. where the EPO refuses to issue the required written opinion;
2. where the EPO notes deficiencies regarding the requirements of novelty, the inventive step, or industrial application for one or more claims;
3. where the EPO notes deficiencies regarding the unity of invention requirement.
In response, the applicant may file with the UIBM an amended version of the description and claims, a request for limitation of the application, or a request to present one or more divisional applications.
The examination procedure may conclude with the granting of the patent or a refusal that may be appealed before the Board of Appeal.
The introduction of the substantive examination procedure adds new weight and status to the Italian patent, placing it for the first time on a par with grants by other national and international authorities, European and otherwise, which for some time now have provided for a procedure for evaluation of requirements prior to granting.
Source: Rapisardi Intellectual Property
