Innovation and Rights - Developing Biomedical Devices: Design, Innovation and Protection - page 23

UIBM carries out a preliminary assessment and if a patent application shows an
absolutely clear 3 lack of patentability requirements is directly rejected; in this case the
documents are not sent to EPO for evaluation. 4 If the UIBM examiner decides that the
patent cannot be granted because requirements are not met, he/she will send a rejection
notice 5 with adequate motivations to the applicant, who may appeal (art 6) within
60 days and may apply for the conversion of the patent application into a utility model. 6
After the receipt of the search report (but within the period of publication of the
application) and depending on the outcome of the patentability search, the appli-
cant may (art. 5):
• amend (or merge) the claims 7 and/or edit the description 8 ;
• submit arguments about the relevance of the documents quoted in the search
report and clarifications about the eligibility of claims;
• decide to ile one or more divisional applications. 9
After the publication of the patent application, the UIBM should proceed with the
substantive examination.
3.2.3.1 Substantive Examination for Italian Patent Applications
The substantive examination (namely the examination of the patentability require-
ments) is mandatory for all national patent applications filed after 1 July 2008.
The beginning of the examination is notified to the applicant with a written notice.
The claims, the description and the drawings can be amended or even the patent
application can be converted into a utility model.
3 Ranieli [ 1 ] remarks that “… in the presence of an invention implemented through a computer
software, the UIBM may, having analyzed the application for the invention before forwarding it
to the EPO, detect the absence of requirements for validity, which however must emerge plainly
from the declarations or allegations of the applicant or from known facts. As a matter of fact,
such absolute evidence of invalidity can hardly emerge from a summary examination of an appli-
cation relating to computer-implemented inventions. Unless they relate to the software itself,
such inventions always need careful assessment. Accordingly, although possible, it is scarcely
likely that the UIBM may deny patent protection without involving the EPO.”
4 This preventive assessment is dual since it is performed both by the UIBM and by the EPO.
5 The rejection notice is interlocutory and should envisage a deadline for the applicant (pursuant
to art. 172.2 of the Italian Code of Industrial Property) to reply to the examiner's inferences.
6 A well-known industrial property expert maintains that an examination system such as the
French one might be more appropriate, since it is a “streamlined system”, and he remarks that
“… the only patents for invention which the national Office will eventually grant are those cases
for which the search report is positive and those cases for which the applicant shall take the trou-
ble to start an examination procedure, including a possible appeal before the Board, to achieve a
patent only for Italy. If this were be the case, Italian patent applications would end up by having
a mostly “sacrificial” value: they would be filed in order to obtain (at the expense of the UIBM)
a search report, only to be dropped thereafter, without even giving rise to the payment of mainte-
nance fees to the UIBM itself.”
7 Without broadening the scope of protection of the patent.
8 The description and the drawings are meant to construe claims and not to integrate them.
9 If the lack of unity of invention has been highlighted.