Re-introduction of annuities on patents, utility models and designs in Italy

The Italian Government has recently re-introduced the annuities on national applications for patents concerning industrial inventions, utility models, designs, as well as fees concerning renewal and keeping in force of established rights (Legge Finanziaria - Italian Finance Act of 2007 nr. 296/06 - art. 1, paragraph 851). It is worth mentioning that with the previous Legge Finanziaria of 2006 (Act nr. 266/05 art. 1, paragraphs 351 and 352) these fees had been abolished; during 2006 the new Applicants and the Patentees were not required to pay any amount in order to file a new patent or to maintain those patents they already owned. Although the 2007 Legge Finanziaria has already come into effect, fee amounts payable and terms of payment will be set with a further Decree which will shortly be approved. The draft of the Legislative Decree provides as follows: Exemptions: The following are exempt from payment of licensing and transcription rights concerning patents for inventions and utility models: universities, public administrations having research among their activities, and administrations for defence and agricultural, food and forestry policies. Terms of payment: The patents’ maintenance fees for industrial inventions, for utility models and for the registration of designs are due from the payment terms starting from January 1st 2007 and more specifically: a) From the fifth year from filing for the patent of industrial invention; b) From the second five-year period from filing for the patent for utility model; c) From the second five-year period from filing, in order to file a design. Methods of payment of the maintenance fees: The payment of the maintenance fees must be made in advance, no later than the last working day of the month in which the application was filed. After the expiry of said period, payment is possible for the following six months, paying the corresponding late fees. Payment is also possible within four months from the date of granting of the intellectual property rights, and during the following six months, upon payment of the corresponding late fees. It is possible to pay in advance several annuities for the same patent. Transitional period: With reference to the intellectual property rights with an expiry date starting from January 1st 2007 to April 30th 2007, the payment is due no later than the last working day of June 2007 and during the following six months upon payment of the late fee. As for the utility models and for the filing of designs having the five-year periods after the first one falling due during the year 2006, a forfeit amount will be payable, amount which is yet to be determined. Also in this case payment must be made no later than the last working day of June 2007 and during the following six months upon payment, of the corresponding late fees. If at the end of this period no payment is made, then the patent, the utility model, or the design, will be declared as abandoned on the 31.12.2006. For textile designs in force on 31st December 2006, the first payment due according to the amount which will be established by the Decree shall be paid starting from the first five-year period calculated from the original application date. It should be noted that all the fees, other than the annuities or the five-year period payments mentioned above, are due starting from the fifteenth day following the enforcement of the Decree. Rapisardi Intellectual Property will communicate the date of the enforcement of the Legislative Decree which will implement the provisions established by the 2007 Legge Finanziaria as soon as it is approved. In the meantime, should you have any queries do not hesitate to contact the Patent Office.


03/30/2007 | Patent