Patents

De Tullio & partners employs professionals specialized in prior art searches in patent matters, using the databases of national and international Patent Offices, but above all specialized B2B databases, which allow for more reliable results to be obtained in less time, as well as translations of applications for patent filed in countries that do not adopt English or other European languages as filing languages.

The investigation will restrict the field to a small number of more relevant results, with the aim not only of assessing the actual patentability and inventive height, but also of assessing the freedom of implementation, identifying potential competitors and highlighting possible critical issues that may affect the novelty of your idea.

The research will end with a legal and technical interpretation of the data, in the light of the relevant practice of the national and regional Patent Offices and of the administrative and judicial jurisprudence of the specialized Courts.

Patent searches can be real risk analyses, to be carried out on a periodic basis to avoid having to face huge investments due to having underestimated the effects of the secrecy of patent applications in the period between the filing of the application and the publication, after 18 months.

De Tullio & Partners employs specialized professionals for constant updating of the research carried out, in terms of risk analysis, both to avoid conflicts with previous rights of third parties and to minimize the risks deriving from the non-accessibility of data in the aforementioned window period.

The risk analyzes may also concern the freedom to operate on some markets – without the possibility of monopolizing the invention – due to the forfeiture of the validity of previous titles, due to failure to extend internationally within the time limits established by the regulations, non-payment of annuities, legal status inactive or effects of the compulsory license in the countries of interest.

De Tullio & Partners follows the client in every phase leading up to the filing of the patent application at the UIBM, by filling in the necessary forms and analyzing the documentation, so that the filed application corresponds to the criteria of conformity and regularity in terms of claim, drawings and sufficiency of description.

It also follows the subsequent phases of the filing – in particular, the expiry notices for international and regional extensions – any responses to requests from the UIBM to arrive at the granting of the title, the conformity of the certificates and the annual maintenance of the rights.

The owner of a patent can decide to extend – within the priority period of 12 months from the filing – the patent application in an international or European context, and also assert his patent coverage abroad.

This process is governed by some International Conventions such as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) relating to the International Patent, which will allow you to extend your title outside national borders for a period of validity 20 years from filing.

Filing and registering a patent application abroad – through the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) – it is a complex procedure which, in addition to filing the application, requires a validation procedure as regards the European Patent, with the filing of translations with some foreign offices, and a nationalization procedure in the case of the PCT, which is managed by the Patent Offices of each country claimed in the international application.

Our team of experts offers complete assistance during all phases of applying for and managing a patent and in the phase following recognition, providing qualified assistance in the strategic management and presentation of a patent portfolio to potential investors, carrying out evaluations on the acquisition, sale or licensing of one or more patents, quantifying the related royalties or the transfer price according to the parameters of the reference market.

In defense of your patent De Tullio & Partners offers comprehensive coverage that assists clients in preliminary assessments before starting or defending themselves in a patent infringement proceeding – in order to reduce the risks deriving from possible greater damages deriving from the declaration of patent invalidity – against third parties.

Once the infringement of the intellectual property right has been identified, our investigative team will collect the evidence of the infringement, prepare the necessary documents to request any precautionary actions of the case and manage the related causes – both relating to cancellation and opposition procedures, active or passive, brought before the Appeal Boards of the European Patent Office (EPO), and before the jurisdictional courts – up to the final decisions and possible appeals.