On October 26 2007, the Italian Official Gazette published a decree of the Italian Ministry of Economic Development (which is in charge of the Italian Patent and Trade Mark Office) indicating – among other issues – its willingness to reach an agreement with the European Patent Office on prior art searches of Italian patent applications.

At present the Italian PTO only performs a formal examination of patent applications. Therefore, Italian patents are not examined with the benefit of prior art searches and are only presumed valid. Validity is then discussed during nullity lawsuits or extra-judicially between the parties.

With the ever-increasing awareness of the importance of patent protection, in 2005 the new Italian Intellectual Property Code added into the law a provision confirming the need for the Italian Patent Office to create a procedural system to carry out prior art searches when examining patent applications.

Since the EPO already provides these types of searches for other national patent offices, the Italian Ministry has begun to pave the way for a bilateral agreement between the EPO and the Italian PTO with the above-mentioned decree. Such an agreement would create a legal framework to allow the EPO to perform prior art searches on behalf of the Italian PTO.

Discussions between the EPO and the Italian PTO are already under way to try and implement this service as soon as the second half of 2008.

Micaela Modiano

Modiano & Associati
Via Meravigli 16
Milano I-20123
Italy
Tel: +39 02 85 907 777
Fax: +39 02 863 860
info@modiano.com
www.modiano.com