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Patent owners face validity risk in Italy

Emma Barraclough, London

Patent owners in Italy must ensure they pay their first patent annuity fee or they risk having their patent rights voided retrospectively, according to a decree issued by the Italian government last week

The decree provides more information about the introduction of a substantive search for Italian patent applications.

At the moment, there is no search and examination of Italian patent applications. Instead, they are assumed to be valid under Italy's patent registration system. But earlier this year the government announced that the EPO will carry out a search report in respect of Italian patent applications.

At the same time, it reintroduced patent filing fees and annuities almost 18 months after abolishing them in attempt to boost patenting levels in the country.

In the latest decree, the Ministry of Economic Development, which oversees the Italian Patent and Trademark Office (IPTO), clarifies that the EPO will carry out searches for Italian patent applications, following an agreement between the IPTO and the EPO.

But lawyers say they are concerned about provisions in Article 3 of the new decree. This says that a patent is considered lapsed from the filing date in cases where the patent owner does not pay the fifth annuity fee (the first annuity payable in Italy for domestic patents).

"Such retroactive effect does not seem to have any legal basis in the Industrial Property Code," said Mario Leone of Leone & Spadaro.

He added that the wording of the decree implies that the rule would also apply to European patents already granted and validated in Italy, when the fifth annuity becomes due.

Antonio Pizzoli, an attorney at Società Italiana Brevetti, said that IP practitioners are seeking clarification about the new rule from the Ministry.

"If they do not pay the first annuity, then patent owners stand to lose their rights over the invention retrospectively," he said. This could have an impact on a patent owner’s ability to litigate the patent, or to enforce royalty rights.

Many patent owners choose not to maintain a patent for its full 20-year term for commercial reasons, but still want to have the patent treated as valid for the length of time for which they enjoyed monopoly rights over the invention.

"This [Article 3] really doesn’t make a lot of sense," said Pizzoli.

The same provisions will also apply where the owner of a utility model or registered design fails to pay a renewal fee to maintain his rights for the second five-year period.

The decree was published in the Official Gazette on October 26 and came into force the next day.