Design fees make a come back

First the Financial Law 2006 abolished them. Then the Financial Law 2007 announced their return. In what many hope is the last word on the matter, the Italian government announced its new fee structure for patents, utility models and designs in a ministerial decree issued on April 6 2007. Rights holders will incur a fee when applying for or maintaining a patent, utility model or design. As is often the case with fees, the decision has much to do with raising revenue. However, rather than getting lost in the government's coffers, the fees charged under the new scheme will fund certain services at the Patent and Trademark Office. Also planned, but not yet implemented, is an additional patent fee to cover the cost of conducting a prior art search for every new Italian patent application.

The new fee system strongly encourages online filing and sets very reasonable fees for online applications for industrial inventions and utility models. However, application fees for traditional paper filing are considerably higher and are calculated according to the length of the patent description. Unfortunately for foreign applicants, online filing is available only for national patents, not for the validation of European patents.

Maintenance fees are due annually from the fifth year from filing for patents which are either filed in Italy or filed in Europe and validated in Italy. Fees for utility models and designs fall due only once every five years, beginning from the second five-year period.

Universities and other public institutions which count research among their institutional purposes are exempt from fees, as are defence and agricultural public administration bodies. Young inventors and authors are entitled to a 40% discount in fees following the amendment of the Taxation Act in the Financial Law 2007.

Certain categories of IP registration for which fees were not abolished in 2006, including supplementary protection certificates, semiconductor topographies, new plant varieties and trademarks, remain unaffected by the new scheme.

In the case of utility models and designs, transitional provisions provide a special reduction for maintenance fees that would have been due in 2006 but for the abolition of fees in that year. Maintenance fees which fall into this category are due by the end of June 2007. Maintenance fees normally due between January 1 2007 and April 30 2007 - at which time the government had announced the reintroduction of fees, but had not yet devised the details - are also due by the end of June 2007. Following this transitional period, all maintenance fees will be due by the end of the anniversary month of the filing date.

Maintenance fees for patents which would normally have been due in 2006 are not payable. However, in the case of fees normally due between January 1 2007 and April 30 2007, payment was required by the end of June 2007.

Julia Holden and Claire Henderson, Trevisan & Cuonzo Avvocati, Milan