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Re-establishment of rights and validation of European patents in Italy
Jacobacci & Partners spa - Italy
07 Mar 2012
A recent decision of the Board of Appeal of the Italian Patent and Trademark Office (PTO) has introduced a more liberal interpretation of the re-establishment of rights following a missed deadline for filing an Italian translation of a European patent in connection with validation of the patent in Italy.
On 25th January 2012 the board issued a decision granting the restoration of rights for the validation of a European patent for which the translation, required according to Article 56 of the Italian Code of Industrial Property, had been filed after the three-month time limit provided by Article 65 of the European Patent Convention had elapsed.
Article 193 of the Code of Industrial Property requires, as a condition for the re-establishment of rights, that a patent holder which has missed the three-month time limit have nonetheless exercised the “diligence required by the circumstances” when selecting a “substitute” to file the required translation. In addition, the substitute must be able to demonstrate that its practice conforms to normal professional standards, and that it maintains procedures and controls for avoiding errors. A long professional history of managing deadlines in patent portfolios along with multiple check procedures may be used as evidence of the appropriate level of diligence.
In the case at hand, the patent owner entrusted the filing of the Italian translation of one of its European patents to the patent department of a substitute which was an affiliated company of the patent owner.
The substitute used a double-check procedure for docketing and meeting deadlines for national validations of European patents. This procedure involved the following steps:
In the case at hand, the first employee docketed an incorrect date. He also failed to give the second employee a print-out of the deadlines which included the incorrectly entered date. In addition, he failed to provide the second employee with a copy of the decision to grant provided by the EPO.
When the second employee later received the periodic report, the European patent was included, but with the incorrectly entered date. This employee believed that he had already checked all of the dates contained in the report and did not verify the correctness of the date. This resulted in the miscalculation of the three-month time limit for national validation and the missed deadline.
Argument for re-establishment
The petition for the re-establishment of rights stated the following:
These arguments were accepted and the European patent was successfully validated in Italy.
Benefits for patent owners
The board’s decision confirms that the Italian PTO has departed from the narrow approach to the re-establishment of rights which it had previously applied and which had led to the rejection of petitions for re-establishment even when the deadline for validation of an European patent was missed due to exceptional circumstances or human error not caused by external factors (eg, employee illness or fire damage to computers). The decision ultimately demonstrates the alignment of Italian law and the practice of re-establishment of rights with the approach adopted elsewhere in Europe. It provides a framework for the conditions necessary to obtain a favourable decision for cases in the future.
The board’s decision underlines the importance of:
In this regard, it is vital to preserve all documents regarding the instructions given to the substitute to validate a European patent in Italy, as well as documents relating to internal procedures and guidelines of both the patent owner and the substitute.
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