The second phase of the examination procedure of Italian patent applications is now in full swing. As a matter of fact, since August 2011 it has been possible to file a reply to the search reports issued by the Italian Patent and Trademark Office (IPTO) in cooperation with the European Patent Office (EPO).

One of the interesting issues which have become apparent is that where a reply on the merits deals with the novelty and inventiveness objections raised in the search report, it is unlikely that a new examination report will be issued by the IPTO. In other words, the IPTO will contact the applicant only in exceptional cases, for instance where the Examiner has doubts as to the actual content of the reply or in situations where the reply seems to introduce subject-matter which extends beyond the original content of the patent application. In all other cases, i.e. when the content of the reply seems to address the objections raised by the EPO, the application will be granted.

In view of such streamlined procedure, if the IPTO will be able to maintain the pace with which it is dealing with applications at present, once a reply has been filed the application will be granted within three-five months. This would mean that Italian applications might be granted within two years from the filing date, which is a welcomed improvement with respect to the past.

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