Innovation and Rights - Developing Biomedical Devices: Design, Innovation and Protection - page 22

Fig. 3.1 Italian patenting procedure
3.2.3 The Patentability Search Carried Out by the EPO
A Ministerial Decree of 27 June 2008 establishes the rules for carrying out the
substantive examination of applications for patents of industrial invention [ 16 ].
“The Italian system introduces an examination of novelty but outsources com-
petence thereof”.
Indeed, art. 1 specifies that the prior art search is to be carried out by the
European Patent Office (EPO), that should receive from the UIBM within
5 months from the filing date the text of the application to be assessed. 1
The EPO examiner prepares the search report 2 : it may also be partial, if a lack
of unity of invention is found. Together with the search report the examiner sends
to the UIBM the written opinion which has a “purely informative” value. This
operation is due within the following 4 months, then UIBM forwards these docu-
ments to the applicant.
Typically the applicant is provided with a valid decision for the later stages
within 9 months from the filing date of the patent application. This scheduling
allows the applicant to have sufficient information and time for the next decisions
about extension of the national application.
1 The application also includes the English translation of the claims [either submitted by the
applicant within two months since the filing date (with an extension of one month) or performed
with the aid of automatic translators: in this case, the applicant shall have to pay a fee of € 200]
(Art. 8).
2 Unless the application relates to non-patentable findings or else the description, the claims and
the drawings contain abstruse, inconsistent or contradictory notions [art. 4(4) and art. 5].