2011 promises to be full of improvements for the Italian Patent and Trademark Office (PTO). In fact, the examination phase of Italian patent applications has already commenced, and the start of the trademark opposition procedure is imminent.

With regard to patents, as from the beginning of March 2011, the Italian PTO has started issuing its first examination reports on Italian patent applications not claiming a foreign priority.

The reports consist of a communication enclosing the search report and opinion prepared by the European Patent Office (“EPO”), and setting a deadline within which the applicant must reply to the findings of the EPO. On the basis of the latter, applicant is given the possibility either to amend the patent text, to confute the opinion of the European search examiner, to limit the scope of protection of the patent or to file divisional applications.

The normal deadline for submitting the reply is set within 5 months from the publication of the patent application, which publication occurs 18 months after the filing date (in fact, there is no actual publication in printed form, but the application is made available to public inspection). However, since this new examination procedure applies to all first filings submitted from July 2008, for those applications that were already published, the deadline for a reply to the examination report is set within 5 months from the receipt of the report.

With regard to trademarks, the administrative opposition procedure should begin in May 2011, barring delays. One of the obstacles that has to date prevented the start of the opposition procedure is the organization of the publication of trademark applications and registrations, which by law sets the deadlines of opposition.

The Italian PTO is therefore developing virtual publication of the trademarks through an online bulletin, as already occurs at a European level.

While there is plenty of expectation on these new procedures, it will take several months to see how they will actually be conducted. In any event, these are very positive signs that demonstrate the increased importance of intellectual property rights in Italy.

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