Guide to Italian Design Patent Application

Guide to Italian Design Patent Application

In the era of globalization, protecting intellectual property is crucial, particularly in a country like Italy with its rich history and cultural heritage. For businesses or designers looking to establish themselves in this market, understanding and mastering the local design patent application process is key. This article provides a detailed overview of the necessary documents, procedures, and critical timelines for applying for a design patent in Italy.

Required Documents：

• Representations / Pictures.
• Brief description (in Italian): a short text outlining the design’s key visual features.
• Power of Attorney (Scanned copy).
• Priority document (Scanned copy with Italian translation or DAS code, if any).
• Ownership Declaration / Employment Certificate / Priority Rights Assignment (if any).
• Official fee payment receipt.
• Declaration of translation accuracy for the Italian version.

Authority:

• Italian Patent and Trademark Office (UIBM), https://uibm.mise.gov.it/index.php/en/

Term of Protection:

• Initial 5 years, renewable 4 times, for a maximum of 25 years in total.

Definition: 

• A design in Italy refers to the appearance of a product or part of a product—particularly features derived from lines, contours, colors, shapes, textures, or materials of the product or its ornamentation. The design must be new and possess individual character.

Process & Procedure: 

• UIBM conducts formal examination only (no substantive examination). Multiple designs may be filed in one application, provided the products belong to the same Locarno class. The official fees must be paid on the same day as filing. The filing date will be recognized only after payment is made.

Points:

• If a design also serves a functional purpose, the applicant may file both a utility model and a design application. Two separate applications are required, each conferring independent rights. If a design application includes a request for utility model protection, UIBM will invite the applicant to clarify or limit the filing. Alternatively, the applicant may submit a separate utility model application, which retains the original filing date.
• Deferred Publication:
  • Applicants may request deferred publication for up to 30 months from the filing or priority date. During this confidentiality period, the design remains undisclosed and unexamined.
  • The request for deferred publication must be filed together with the new application.
  • If no deferral is requested, the application will be published the day after filing. Once published, no deferral request can be made.
• Amendment of Title: UIBM allows the title of the invention or design to be amended only if the original wording is erroneous or fictitious.

Novelty Grace Period: 

• There is a 12-month period between the first public disclosure of a new design and the filing of the registration application, during which the rights holder can formally submit a design patent application.

Renewal Fees: 

• For each 5-year protection period, a renewal fee must be paid before its expiration—specifically at the beginning of the 6th, 11th, 16th, and 21st years. Late payment within a 6-month grace period is allowed with an additional €100 surcharge.

Grant Timeline:

Average registration time: 6–8 months.