Brevettare all'estero

Patents are territorial rights and, therefore, are only protected in those countries and in those regions, meaning the specific set of countries where they have been granted. In other words, if a patent is without protection in one country, the invention (or utility model or new plant variety) can be duplicated, used, imported or sold by anyone in that territory. The protection of a patent in foreign countries gives, vice-versa, the owner the possibility of benefitting from the same exclusive rights enjoyed in Italy.
Patenting abroad is also useful to broaden the spectrum of opportunities for granting licences to foreign companies, thus developing relationships outside the company and benefitting from an alternative mode of access to foreign markets, only through collaboration with other companies.

Since protecting a patent abroad is very expensive, it is appropriate to carefully select the countries in which to request protection, verifying a series of conditions, including:

  • where will the product be manufactured?
  • where is it more likely that the patented product will be marketed?
  • which are the main markets for similar products?
  • where are the main competitors?
  • what are the costs involved in patenting?
  • what are the procedural difficulties in protecting a patent in a given country?


Claiming a priority
The date of the first national filing of a patent is called the "priority date" and any further filing, forwarded to other countries as long as it is within the next 12 months (within the "priority period"), will benefit from the same priority date with respect to any other filing that has been subsequently forwarded by others for the same invention. Therefore, it is mandatory to forward the patent applications abroad within the priority period.
The priority claim must be made together with the filing application. It must contain information on the first filing and relative filing documentation, certified by an official with signing ability; this documentation, if not filed together with the priority claim, must be received within 16 months from filing the claimed application.
After the expiry of the priority period and until the application is published for the first time by the Patent office (normally after 18 months from the priority date), theoretically it may still be possible to request protection for the same invention in other countries, but it will no longer be possible to claim priority on the first filing. However, it must be noted that the publication of the invention, although it occurred in other countries, will seriously jeopardise the novelty requirement during any attempts of subsequent filing.


Inventions and utility models
There are three main ways to protect an invention or a utility model abroad:

  • The national path. Protection at the National patent office of each country involved may be requested by filing a patent application in the language provided and paying the relative fees. Also, in many countries, foreign applicants are required to use local industrial property consultants. This path can be very expensive, as well as inconvenient, if the number of countries is high.
  • The regional path. When many countries are members of a regional system of patents, it is possible to submit a request for protection with effect on the territory of all or some of these countries, through the competent regional office: for Europe, the European Patent Office - EPO (EPO).

 

 

  • The international path. If a company intends to protect an invention or a utility model in a number of country members of the Patent Cooperation Treaty (PCT), it is possible to consider the opportunity of submitting an international patent application (PCT). A single PCT application, in one language only and beyond payment of a single group of taxes, has legal effect in all country members of the PCT. This method significantly reduces the initial costs of the procedure, avoiding the submission of single applications for each Patent office. The PCT may also be used to submit applications in some of the regional patent systems. By submitting an international application under the PCT, it is possible, at the same, to obtain a preliminary non-binding opinion on the patentability valid in over 139 countries.

New plant varieties
Even for new plant varieties the protection can take place with the request of right:

  • at national level, by submitting a single application to the appropriate Offices present in each country where to register the right
  • at Community level, by submitting an application to the Community Plant Variety Office (CPVO)
  • at international level, by submitting an application to the International Union for the Protection of New Varieties of Plants (UPOV)

The Community and international procedures have the advantage, with respect to the national, of having to submit a single application valid for all countries involved, with reduced costs with regard to the translation (single) and the taxes to be paid.

The European patent

The international patent (PCT)

The Community right

The international right

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