Collegio Italiano dei Consulenti in Proprietà Industriale
Collegio
Italiano
dei Consulenti in Proprietà Industriale
Italian
section
of FICPI
Italian section of FICPI
Joint Meeting of Collegio and JPAA
TOKYO July 18 2007
Qualification for and scope of
Patent Attorney in Italy
Renata Righetti
1
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
1.
Summary
1. Professional representation before the Italian PTO
2. History of the Institute of Industrial Property
Consultants (Patent Section/Trademark Section)
3. Rules for admission to the Institute of Industrial Property
Consultants
4. A few data on the Institute of Industrial Property Consultants
5. Professional representation before the OHIM
6. Professional representation before the EPO
7. Professional representation before the San Marino PTO
(Last Minute News)
2
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1. Professional
representation before
the Italian PTO
2.
Art. 201 of Italian Code of Industrial
Property
(Leg. D. No.30 of February 10, 2005)
3.
4.
5.
6.
states
7.
“No one is required to be
represented by an attorney (…) in
procedures before the Italian Patents
and Trademarks Office”
3
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
However the following Art. 202 states that
Summary
1. Professional
representation before
the Italian PTO
2.
3.
4.
5.
6.
7.
“(…) individual or legal entities may
be represented in proceedings
before the IPTO, as well as before
the appeal Committee, only by
qualified consultants registered on
an appropriate list (…)”
4
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1. Professional
representation before
the Italian PTO
2.
3.
4.
5.
6.
7.
In addition to persons registered on
the list,
professional representation before
the IPTO is “granted to attorneys
registered in their professional bar “
(Art. 201(6) of Italian Code of Industrial Property)
5
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2. History of the Italian
IIPC (Patent Section)
3.
4.
5.
6.
7.
Until February 27th,1983 any person
was entitled to represent third parties
before the Italian Patent and
Trademark Office
6
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2. History of the Italian
IIPC (Patent Section)
3.
4.
5.
6.
7.
On April the 3rd 1981, a Ministerial
Decree provided for the creation of a
List of Representatives on patent,
utility model and design matters
before the IPTO.
7
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2. History of the Italian
IIPC (Patent Section)
3.
4.
5.
6.
7.
According to the provisions of the
Ministerial Decree, a Commission
was nominated in November 1981 to
create the first List of Patent
Attorneys
8
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2. History of the Italian
IIPC (Patent Section)
3.
4.
5.
6.
7.
Any person having a proven
experience of at least 5 years in the
field of patents was allowed to apply
for registration in the first List of
patent attorneys
9
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2. History of the Italian
IIPC (Patent Section)
3.
4.
5.
6.
7.
The Commission (composed by 8
members) checked all the submitted
applications and reported to the
Minister the first List of Patent
Representatives.
The first List was approved by the
Minister and entered into force on
February 27th, 1983
10
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2. History of the Italian
IIPC (Patent Section)
3.
4.
5.
6.
7.
On May 30th 1995, Ministerial
Decree No. 342 revised some Rules
of the List of Representatives before
the IPTO and created the Institute
of Industrial Property Consultants
formed by two sections: the Patent
Section and the Trademark section
11
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2. History of the Italian
IIPC (Patent Section)
3.
4.
5.
6.
7.
According to the Ministerial Decree
all the patent attorneys registered
within the Patent Section were
allowed to automatically enter the
new Trademark Section.
12
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2. History of the Italian
IIPC (Patent Section)
3.
4.
5.
7.
6.
7.
Individuals having at least 5 years of
proven experience on trademark
matters were allowed to submit their
application to be registered in the
Trademark Section.
13
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2. History of the Italian
IIPC (Patent Section)
3.
4.
5.
6.
7.
The Committee of the Institute was
in charge of examining the submitted
applications and started issuing the
first list of the Trademark Section
from the 20th of October, 1995
14
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3.. Rules for admission to
the Institute of
Industrial Property
Consultants ( Patent
Section/ Trademark
Section)
4.
5.
6.
“Any individual can be registered in
the Institute of the Industrial Property
Consultants if (…)
has passed the qualification exam”
7.
(Art. 203 §1(d) of Italian Code of Industrial Property)
15
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3.. Rules for admission to
the Institute of
Industrial Property
Consultants ( Patent
Section/ Trademark
Section)
4.
5.
6.
7.
To be admitted to the qualification exam,
the “any person” has to show that he or
she has obtained a university degree (or
equivalent degree in any foreign country)
or a diploma issued by a EU member
State (…) certifying some kind of postsecondary studies of a minimum
duration of three years on condition that
the course attended has a technicalprofessional content relevant (…) with the
qualification sought
16
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3.. Rules for admission to
the Institute of
Industrial Property
Consultants ( Patent
Section/ Trademark
Section)
4.
5.
6.
It is also necessary to prove that he or she
has carried out at least two years of
professional training (…) within
companies, offices or services specialized
in industrial property
7.
Any person having passed the qualification
exam at the EPO is qualified to sit the
qualifying exam in the patent section
17
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3.. Rules for admission to
the Institute of
Industrial Property
Consultants ( Patent
Section/ Trademark
Section)
4.
5.
6.
7.
The qualifying exam for registration in the
patent or trademark sections consists of
written and oral tests aiming to ascertain
the technical and practical preparation in
the specific field of industrial property
rights as well as in the field of technical,
legal and linguistic culture with regard to
section concerned
18
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
EXAM FOR QUALIFICATION – PATENTS
Summary
1.
2.
3.. Rules for admission to
the Institute of
Industrial Property
Consultants ( Patent
Section/ Trademark
Section)
4.
5.
6.
7.
1. Practical written test
2. Oral test on the following material:
a)
b)
c)
d)
Notion of public and private law, of competition law, of civil
procedural law, of chemistry or engineering or electricity
Patent and Utility model law
Community and International IP laws
At least one foreign language chosen from English, German
and French
19
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
EXAM FOR QUALIFICATION – TRADEMARKS
Summary
1.
2.
1. Written test on the theory and practice relative to questions
and criteria regarding registrability of marks, their classification
in product and services, at filing and during prosecution, the
interpretation of laws regarding trademarks
3.. Rules for admission to
the Institute of
Industrial Property
Consultants ( Patent
Section/ Trademark
Section)
4.
2. Oral test on the following subjects:
5.
6.
7.
a)
b)
c)
d)
Public and Private law, civil procedural law
Trademark law, other distinctive signs, denominations of origin,
indications of origin or provenance
Community and International IP laws
A foreign language chosen from English or French
20
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3.. Rules for admission to
the Institute of
Industrial Property
Consultants ( Patent
Section/ Trademark
Section)
4.
5.
6.
7.
The qualification exam for the two Sections
shall take place every two years upon decree
of The Ministry for Productive Activities
21
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
The following persons are exonerated from
taking the qualification examination:
Summary
1.
2.
3.. Rules for admission to
the Institute of
Industrial Property
Consultants ( Patent
Section/ Trademark
Section)
•
An employee of the Ministry for Productive
Activities who has served at least 5 years
with managerial functions at the IPTO
•
An Italian citizen who has served for at
least 5 years as examiner at the EPO
4.
5.
6.
7.
22
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4. A few data on the IIPC
5.
6.
7.
On June 30th 2007, the Institute of
Industrial Property Consultants
had
995 members
23
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4. A few data on the IIPC
5.
346 in the Patent Section
6.
7.
220 in the Trademark Section
429 in both Sections
24
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4. A few data on the IIPC
5.
902 in the profession
(90,65%)
6.
93 in-house counsels
( 9,35%)
25
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
83,6 %
3..
4. A few data on the IIPC
5.
6.
14,6 %
7.
1,8 %
26
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
4
29
Summary
450
1.
2.
100
3..
4. A few data on the IIPC
5.
6.
7.
21
88
140
32
2
10
100
1
8
5
2
3
27
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4. A few data on the IIPC
5.
6.
7.
The Institute of the Industrial
Property Consultants is governed
by a Committee of 10 members,
who are elected every three years
A President and a Vice-president
are nominated among
the committee members
28
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4. A few data on the IIPC
5.
6.
7.
The Committee of the IIPC has the
duty to verify that the Statutes of
the Institute are observed by all
the members
29
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4. A few data on the IIPC
5.
6.
7.
The Institute stays in contact with the
Ministry, the IPTO and some
Parliamentary Commissions to
give opinions on any matters
concerning industrial property
rights and their implementations
30
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4. A few data on the IIPC
5.
6.
7.
A Newsletter is published on a
quarterly basis to update patent
and trademark attorneys on any
interesting news concerning IP in
Italy
31
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4. A few data on the IIPC
5.
6.
7.
Several educational meetings are
organized by the Institute
for members and interested parties
every year
32
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5. Professional
representation before
the OHIM
6.
7.
As the Community Trademark and
Design are sovranational rights, it
follows that there is a strict link
between representation before the
national PTO of the European
member States and the
professional representation before
the OHIM
33
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5. Professional
representation before
the OHIM
6.
7.
Indeed
(as per Art.89 of Council Regulation No.40/94),
any person who is entitled to
represent natural or legal persons
in trademark matters before the
central industrial property office of a
Member State may be entered on
the list of professional
representatives before the OHIM
34
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5. Professional
representation before
the OHIM
6.
7.
As a consequence, professional
representatives enlisted in the
Trademark Section of the Italian
IIPC are recognized as
professional representatives before
the OHIM on either trademark and
design matters
35
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5. Professional
representation before
the OHIM
6.
7.
An additional list was formed later by
the OHIM to enlist the professional
representatives who are entitled to
represent before their national
patent offices on design matters
36
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5. Professional
representation before
the OHIM
6.
7.
Representatives registered in the
Patent Section of the Italian IIPC
are comprised in this additional list
and can represent third parties
before the OHIM on design
matters
37
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5. Professional
representation before
the OHIM
6.
7.
Legal practitioners are also entitled to
represent natural or legal persons
before the OHIM to the extent that
they are entitled to act as
representatives in a member State
38
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5. Professional
representation before
the OHIM
6.
7.
It is possible to appoint an association
of representatives (for instance a
professional firm) before the OHIM
and the authorization signed in
favour of the association is
supposed to be given to each and
all the attorneys of the association
39
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5.
6. Professional
representation before
the EPO.
7.
Representation before the EPO has
no links with the professional
representation before the national
PTO
40
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5.
6. Professional
representation before
the EPO.
7.
To become a representative before
the EPO it is necessary to pass a
qualification exam or to be a legal
pratictioner admitted to practice in
one of the contracting States
41
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5.
6. Professional
representation before
the EPO.
7.
According to the last available data,
330 Italian Patent Attorneys are
qualified as representatives before
the EPO
42
Collegio Italiano dei Consulenti in Proprietà Industriale
Italian section of FICPI
Summary
1.
2.
3..
4.
5.
6.
7. Professional
representation before
the San Marino PTO
Members of the Italian IIPC admitted
to represent third parties before the
Patent and Trademark Office of
San Marino
according to the Rules on
professional IP representation
issued the 2nd of July, 2007
43
Collegio Italiano dei Consulenti in Proprietà Industriale
dei Consulenti in Proprietà Industriale
ItalianCollegio
sectionItaliano
of FICPI
Italian section of FICPI
Thank you for your attention!
ありがとう
Renata Righetti
[email protected]
44