Industrial Property (IP) enables the functional aspects of the technological innovation to be protected through Patents, which can be applied for both for inventions and for utility models.
Inventions are industrially applicable ideas that solve of technical problems, for example concerning the operation of products, of industrial systems, the efficiency of production processes and the use of known products. The patent can be issued for an invention by a specific government authority (which in Italy is the Italian Patent and Trade Mark Office, in the USA is the US Patent and Trademark Office, in China is the SIPO, etc.) to which inventors can apply to obtain the exclusive right of use of their invention on exclusive terms within a given geographical area and for a limited time. Patentable inventions Granting of a patent concludes a process that is initiated by submitting an application and involves a series of specific phases. This process includes analysis aimed at identifying the existence of requirements of the invention on the filing date of the application. This analysis is carried out in two phases by an examiner with expertise in the area: the first phase involves selecting the prior art in the technological field of the invention, usually considering patent literature and evaluates international documents; the second phase consists in a comparative examination of the invention in relation to the technological scenario uncovered through the search results. In particular, the requirements to be verified are novelty and non-obviousness (or inventive step) for a person skilled in the art with knowledge of the prior art in the field. As a result of the above, the clearer the description of the invention in the patent application is the more objective comparison will be. The description of the invention contained in the patent application must include background information that could be useful in the case of objection to the patentability expressed by the examiner. Costs must be sustained for the patent process and an annual fee must be paid to maintain the patent for an industrial invention in force. Naturally, granting of a patent can be opposed based on reasonable grounds brought before the competent Judicial Authority, which can decide whether to validate it, limit it or cancel its scope.
Each national patent application for an invention generates an internationally recognized priority right of limited duration granted to the holder who wishes to extend the scope of protection of the invention internationally. This right can be claimed when an international patent process for the same invention is initiated. The effect of this right is that of restricting the activity of the examiners entrusted with verifying the existence of the requirements for patentability (novelty and inventive step) of the invention. In particular, also for them prior art must be limited to the date of filing of the application that generated the priority right. This circumstance clearly suggests that when wishing to extend a patent application internationally it is advisable to take action within the 12 months of validity of the priority right.
To obtain international patents, national patent applications can be submitted to foreign states, preferably within the period of validity of the priority right. Alternatively, within this time limit foreign applications of national type or in accordance with international conventions, such as the Patent Cooperation Treaty (PCT), and the European Patent Convention (EPC), can be filed. Through these conventions it is possible to concentrate the first part of the investment on internationalization of the patent, “graduating” the investment, given that each of them initiates a single analysis process and, consequently, to define a patent text with greater focus on the matter most likely to be considered patentable in the subsequent national patent processes. Clearly, this simplifies and cuts the costs of the national phases, which are the most costly part of the internationalization process of a patent, postponing them to a time in which exploitation of the invention and, with it, the production of economic resources, are normally well advanced.
Utility models are innovations that, unlike inventions, confer particular effectiveness and/or ease of use on given products, even with minimal variations. It is easily understood that in some cases the boundary between utility models and inventions is somewhat fragile. In other terms, the level of inventive step required by a patentable utility model is lower than that required by a patentable invention. In some jurisdictions, there is no screening phase in processes for granting of patents for utility models. This phase is performed only before the Judicial Authority entrusted with ruling on infringement or invalidity of the patent.
Distinctive signs are graphic, phonetic and conceptual elements used by companies to make the origin of products or services marketed to generate profit for the company recognizable. These signs can be considered trade marks provided that they prevent confusion between products/services having identical or similar properties, and where there is the likelihood of people thinking that some form of association exists between the manufacturers of these goods/services.
The regulations identify precise conditions that are summarized in the concepts of novelty and inventive step. In principle, signs that stimulate at least one of the 5 human senses can be registered, provided that these signs can be described graphically in a manner understandable to the layperson. Therefore, in theory it is possible to register signs consisting, singularly and/or in combination of words, two and three-dimensional figurative elements, musical pieces, shades or combinations of colours and, at least in principle, scents, fragrances and surface finishes of products. In practice, scents, fragrances and surface finishes of products are not currently describable in a manner that makes their unequivocal identification possible.
Besides the function described above of recognition of the origin of the product, legal theory and case-law also increasingly acknowledge that the trade mark has the function of spreading typical values of the company it represents. According to this interpretation, the trade mark allows customers to perceive the characteristics of a product or service through implicit association with elements of other products/services having the same origin already known and appreciated before the first opportunity for purchase. Therefore, the trade mark represents a powerful way of conveying messages and commercial information that are capable of influencing the profitability of a product, regardless of its objective characteristics.
It is easily understood that different levels of the above-mentioned functions can be acquired according to the ways in which the trade mark has been used and communicated. In any case, an adequate strategy of sign definition and careful usage makes the product (thus distinguished) more attractive to customers. Therefore, each trade mark represents a factor that capitalizes the results achieved and the reputation of the company. If a registered trade mark is not used for a period of 5 years following the date on which registration is granted, this normally leads to its revocation.
In general, the acquisition of exclusive exploitation rights is obtained via registration, but they can also be attained through the simple use of a limited circle of states, including Italy. Where this is possible, one talks of a de facto trade mark, with a corresponding exclusive right limited to the territory of effectively proven utilization. The difficulty of producing indisputable proof of this utilization in a territory of reference makes registration of the sign preferable, to avoid subjective interpretation of evidence submitted as proof that an exclusive right has been obtained, as this activity is often complicated and hinders the timeliness of legal action. In the case of trade marks, it is also possible to proceed by means of direct application filings or via international conventions, which allow significant savings in time and money. Leaving out the individual national processes, the conventions normally used the most are the European Union Trade Mark Convention, administered by the EUIPO, and the Madrid System, which regulates the International Trade Mark, administered by the WIPO for the first five years of operation. At present, it should be noted that the European Union Trade Mark is the only unified European instrument on IP matters that can currently be obtained, while the International Trade Mark comprises a set of national trade marks. In the case of the European Union Trade Mark, after granting, validity of the right is maintained even with limited use in any of the European states, while in the case of the International Trade Mark, the obligation of use in all of the designated states remains, under penalty of lapsing where not used.
Any two-dimensional or three-dimensional shape that represents the structure of an image or of a product can be subject to exclusive rights on condition that it is novel and has individual character in a given product class. The presence of individual character is evaluated in the light of the general impression aroused in an informed consumer, independently of the type of manufacturing technology, which can be handcrafted or industrial, without distinction. The individual character must also be found in the object as a whole or in a respective position of particular interest due to its shape, the lines that determine the contours, the choice of colours, the special surface covering and/or the materials with which the product must be made. Packaging, presentations, graphical symbols and type characters can also be protected as designs. Protection also covers all aesthetic shapes that arouse in the informed user the same general impression aroused by the given shape that is the subject of a given design.
The ownership of a design registered in a given product class allows an exclusive right to be exercised on the use of a given shape in the designated sector. It can be noted that, by its very nature, the industrial design is aimed at protecting the shapes of objects only with regards to the aesthetic value and cannot be used to claim exclusivity on morphological details that give functional value to the same objects.
The exclusive rights associated with a given aesthetic shape in a product class and in a given state can be claimed by registering a design with the national authority responsible for IP in that state. In addition, international conventions are also provided in the case of designs which allow rights with supranational validity to be obtained. The Community Design, administered by the Office for Harmonization in the Internal Market (OHIM) in Alicante and the International Design, administered by the World Intellectual Property Organization (WIPO), are particularly important. National and Community registrations have a maximum validity of 5 years, and renewable every 5 years up to a maximum of 25 years. In some territorial areas, exclusive rights can also be obtained without initiating a registration process, such as in the case of Unregistered Community Design, the validity of which is limited to 3 years from the date of initial public disclosure.
Domain names can be assigned to numerical IP addresses and, therefore, facilitate identification of hosts on the Internet. The domain name is assigned according to Domain Name System (DNS) criteria.
The Industrial Property Code (Legislative Decree 30/3005) specifies that domain names cannot be assigned in the case of overlapping with a similar trade mark, business, trade name or company name. The aim is to prevent the likelihood of confusion and the likelihood of association between the activity conveyed on the Internet through the domain name and any corresponding prior right. Regarding the connections between trade marks and domain names, it should be pointed out that the ownership of a registered trade mark allows the registration of an identical or similar domain name, registered at a later date by third parties, to be blocked. The registration of a domain name the same as the trade mark of a competitor (a practice now known as domain grabbing or cyber squatting) therefore represents an outright case of trade mark infringement. In order to regain one’s rights, in addition to an infringement investigation, it is possible to obtain the reassignment of the domain name, abusively registered in the name of others, from the competent national and international authorities.
To obtain a registered domain name, it is necessary to apply for one at one of the companies (known as maintainers or registrars) that have signed a permanent contract with the Registration Authority and are therefore the only parties authorized to interact with the NIC of the geographical area concerned. This Authority is authorized to assign new domain names or to cancel domain names no longer utilized or utilized against the established rules of etiquette.