The act of filing a patent application is a necessary step for acquiring the exclusive rights over it, valid only in the countries where it is granted.
This right entitles the patent holder to prohibit third parties from using and marketing the invention covered by the patent without his consent, and therefore to derive an unlawful economic advantage from it.
But how should the patent application be structured?
Patent application structure
Once a prior art search has been carried out and, depending on the outcome, the decision to protect the invention has been made, the patent application can be drawn up.
To avoid compromising the commercial value of an invention and the effective outcome of the patent, whatever the territorial extent decided for filing (Italian, European or international patent), the patent application must contain the following elements:
This summarises the subject of the invention, the solution to the technical problem and its application in only a few lines, in order to evaluate the terms of acquisition of the exclusive patent right from this document. It does not include drawings, except in rare cases.
This describes the invention in a detailed, clear and complete manner (also in terms of terminology, to simplify the necessary translations) so that any person competent in the field is capable of implementing it.
The description must identify:
- the problem to be solved;
- the innovative elements of the invention;
- the state of the art.
In addition, it must include the description of the drawings and related accompanying images, in which multiple embodiments of the invention are proposed to better understand the description and claims.
The heart of the patent text is explained by the claims which circumscribe the scope of protection and set the essential elements that must be included to solve the technical problem (art. 52 of the Italian Industrial Property Code).
The claims undoubtedly represent the most complex part of the patent application and are drafted in a clear and concise manner in a separate document from the description which, together with the drawings, supports their interpretation.
In order to allow the EPO to examine the application, the text of an Italian patent should include the claims translated into English.
The drawings have the aim of visually explaining the technical elements of the invention and better illustrating the features set forth in the related description.
It is optional to file the drawings together with the application, while it becomes mandatory if they are included in the description.
Filing the patent application
Once the application has been drafted, the holder can decide where to file it (electronically or in paper form), as a patent:
- in Italy, with the UIBM or the Chamber of Commerce;
- in Europe, at the European Patent Office (EPO), followed by the relative validationof the designated countries;
- internationally, at the International Patent Office (WIPO), followed by the national PCT phase;
- in a foreign country, at the local Patent Office, meaning in the foreign country where protection is sought.
The filing fees must be paid at the same time as the patent application is filed, followed by an indication of the filing date.
Upon receipt of the application, the Office carries out the formal and substantive examination (patentability requirements) which includes a further prior art search and the related search report.
Subsequently, regardless of the patent application’s stage of the procedure, the holder must comply with the payment of the related annuities.
The patent application filed produces legal effects in the chosen territory from the date of publication, i.e., eighteen months from the filing date.
If all the stages of the procedure are properly carried out and have a positive outcome, the Office shall grant the patent with the relevant grant certificate.