Innovation and Rights - Developing Biomedical Devices: Design, Innovation and Protection - page 21

It is permitted to narrow the claims by combining, for example, the main claim
with one or more secondary ones.
Any amendments should be “limited to claims without incurring the use of ele-
ments contained only in the description”.
In the claims section (written according to European practice) we can generally
distinguish the following elements:
• the preamble describing the prior art;
• the transition part (a sentence of the type characterized in that , consisting of ,
comprising );
• the list of the technical features of the invention.
Claims can be:
• independent, i.e. addressed at the essential characteristics of the invention,
except for implied characteristics;
• dependent, i.e. addressed at particular embodiments , which include the essential
features of the independent claim on which they depend and, possibly, also the
additional characteristics of the dependent claims from which they derive. The
terms particular embodiments also means a more detailed invention.
Generally, a claim is defined by “positive” features: for example, it is written as a
device consisting of X, Y, Z and not a device without (feature) K .
A claim must be presented in terms of “technical features of the invention”
(support structure, compound X, steps of an operation: mix X with Y at a tempera-
ture of Z, etc.). Statements, for example, concerning commercial benefits or other
non-technical features are excluded.
Features other than those entailing “structural” restrictions are admitted: for
example, functional characteristics (only if a person skilled in the art can eas-
ily retrieve the means to perform that function, without exerting any inventive
step).
Claims regarding the use of an invention, meaning its technical application, are
also accepted.
3.2.2 The Italian Patenting Procedure
The management of national patents is assigned to the Italian Patent and
Trademark Office ( (Ufficio Italiano Brevetti e Marchi , UIBM). It is an admin-
istrative office operating within the framework of the Ministry of Economic
Development. This office is in charge of receiving national patent applications,
and its branch offices delegated as collection centers are the local Chambers of
Commerce.
In order to be “receivable”, an application must be filed exclusively by these
offices or mailed directly to the UIBM. The procedure is described in Fig. 3.1 .