How to manage technical innovations between patenting and know-how

Technical innovations patents for industrial invention

A patent for an industrial inventiongenerically referred to as patentis an intellectual property right having as its object ainnovation of a technical nature. 

If the subject matter of the patent is a product, the patent confers on the owner the right to prohibit third parties from producing, using, marketing, selling or importing the product in question for those purposes.

If the subject matter of the patent is a process, the patent confers on its proprietor the right to prohibit third parties from applying the process, as well as from using, putting on the market, selling or importing for those purposes the product directly obtained by that process.

Patent subject matter

The following may constitute patentable subject matter inventionsof any field of technology, provided they meet certain patentability requirements.

A concrete solution to a technical problem is considered an invention. On the other hand, abstract ideas, discoveries, business methods, presentations of information and computer programs are not considered inventions but only 'as such'. In other words, the practical application of a scientific discovery or a software capable of generating a technical effect beyond the normal interactions between software and hardware may be considered inventions and qualify for patent protection upon verification of patentability requirements.

Furthermore, Italian legislation and most foreign laws exclude surgical, therapeutic or diagnostic methods, plant varieties, animal breeds and essentially biological processes for the production of animals or plants from being patentable.

Requirements of the invention

To be patentable inventions must be new, inventive and capable of industrial application; they must also be lawful, i.e. their implementation must not be contrary to public order or morality.

An invention is considered new if it is not included in the state of the art, i.e. if it has never been made available to the public, not even by the inventor himself, in Italy or abroad, before the patent application was filed. This is a universal and absolute concept: any type of disclosure that makes the characteristics of an invention potentially available to the public falls within the state of the art even if it took place in remote places and/or times and in languages other than Italian.

The state of the art includes, for example, patent publications (patents and patent applications) organised in banks freely available data than on payment. 

Obviously, the most dangerous disclosures are those attributable to the inventor. Talking about the invention at a conference, publishing an article, describing the invention on the internet or selling a product incorporating the invention prior to filing a patent application is, in most cases, a disclosure that would compromise the novelty requirement and thus prevent a subsequent valid patent. In Italian law and in general in foreign laws there is no so-called "grace period" for disclosures by the inventor; therefore, if it is necessary to show the invention before filing a patent application, it is necessary to prepare and jointly sign a confidentiality agreement (NDA) so that the meeting is considered confidential.

An invention is considered inventive if, to a person skilled in the art, it is not obvious from the state of the art. In other words, it is not sufficient that the invention differs from the known technique. That difference must represent a leap from the normal development of technical knowledge. The assessment of the obviousness or non-obviousness of an invention should disregard subjectivity and a posteriori analysis. In many cases, patent offices have tried to outline objective approaches to this assessment. An example of this is the so-called Problem & Solution Approach applied by theEuropean Patent Office.

As far as industrial application is concerned, this requirement is generically fulfilled since it is sufficient that the invention can be manufactured or used in any kind of industry, including agriculture. 

Patent application requirements

The patent application must include a technical description of the invention and a technical/legal part consisting of the claims. The claims have the legal function of defining what the holder is interested in protecting. Generally, one or more independent claims are prepared that represent the broadest scope of protection, followed by dependent claims that present progressively narrower scopes of protection in which optional features are introduced, for example, corresponding to the various forms of realisation of the invention. 

The patent can be compared to a contract between the State and the inventor. The state grants a kind of monopoly to the inventor but requires that the invention be described clearly and completely enough for any person skilled in the art to implement it once the patent has expired or lapsed. Thus, one of the requirements of a patent application is the so-called 'sufficiency of description". If the description is insufficient, the patent application cannot be granted and this situation cannot be remedied since it is not possible to supplement the description after the patent application has been filed. 

Another requirement of the patent application concerns the claims. These must be clear and concise to allow third parties to clearly understand how far the scope of patent protection extends.

Rights arising from the invention

As a result of the invention, the inventor has the right to be recognised as its author. It is a moral right, intransmissible and devoid of patrimonial content.

The "patent right"has a patrimonial content and is transferable. This right belongs to the author of the invention or his successors in title (other persons, natural or legal, to whom the author or the law has granted rights to the patent in whole or in part). In the case of several patent holders, the law provides that the rights arising from the patent shall be governed, unless otherwise agreed, by the provisions of the Civil Code relating to community of property.

The exclusive right to use the invention is conferred with the grant of the patent even though the proprietor has the right to enforce it from the date the patent application is made available to the public.

Patent term, nullity and lapse

The patent for industrial invention lasts twenty years from the filing date of the application and cannot be renewed, nor can its duration be extended. The patent may be declared invalid (with retroactive effect), in whole or in part, for breach of the legal provisions relating to validity requirements, or it may be forfeited for non-payment of the annual maintenance fees or for lack of or insufficient implementation of the invention.

 The deposit and concession procedure in Italy

Italian patent applications without priority claims are forwarded to theEuropean Patent Office to be subjected to a prior art search. After the patent application has been made available to the public, theUIBM ascertains the fulfilment of the patentability requirements on the basis of the search report prepared by the European Patent Office and any amendments/arguments submitted following the search report. If it finds no grounds to the contrary, the Office grants the patent by issuing the patent certificate, otherwise it sends a communication to the proprietor or his authorised representative stating its objections and setting a deadline for a possible reply.

Principle of territoriality and foreign deposits

The effects of the patent are limited to the territory of the issuing state. A patent application must therefore be filed with the various National Patent Officesin accordance with local regulations. Various Treaties and Conventions have tried to simplify filings in several states by coordinating the filing and/or examination and granting phases of patents.
Based on the Paris Union Convention The possibility of filing successive patent applications abroad claiming the priority of a first application was introduced so that the assessment of patent requirements is 'backdated' to the date of the first application.

The European Patent Convention  provides a unified procedure for filing, examination and grant of the patent by the European Patent Office. The granted patent, however, is not a unitary title, because it gives rise to a bundle of patents that have the same effect in each adhering state as a national patent. Within 9 months of the grant of the patent, interested third parties may file opposition. 

The Treaty of Cooperation in patent matters (P.C.T.)  is intended to unify filing procedures and facilitate substantive examination by the various national offices. With the filing of a P.C.T. patent application, generically referred to as an international application, the more than 150 Member States.
A national or regional office (for Italian applicants, the European Patent Office) performs a prior art search and the search report is forwarded to the applicant. An international prior art examination can be requested. After 30/31 months from the filing or priority date of the international patent application, the international phase of the application ends and the applicant within that time must complete the necessary formalities to enter the national or regional phases of the various acceding states of his interest. 
It is therefore a bundle of national/regional patent applications, each of which will have to go through the respective national examination procedure in order to be granted.

Utility model patents

Utility model patents or more simply the utility models may be granted for findings that confer a particular efficiency or convenience of application or use on machines, objects or parts thereof, such as, for example, models consisting of particular conformations, arrangements, configurations or combinations of parts. 

The lifetime of a utility model is 10 years from the date of filing.

In Italy, the filing procedure for utility models is very similar to that for patents for industrial inventions, but the utility model in Italy is not subject to a prior art search.

Many foreign states recognise and protect utility models, but the definitions of utility models vary widely from country to country.

Trade secrets

Business information and experience of a technical-industrial nature, including commercial information, which represent an economic value for a company and an advantage over its competitors, are protected if, as a whole or in the precise configuration and combination of their elements, they are secretwhich are not easily accessible to experts and practitioners and have an economic value precisely because they are kept secret. Appropriate measures must therefore be taken to ensure their secrecy.