While patent and trademark markets are global, IP portfolio management is still required on a local level. The right local partner is essential to navigate the unique challenges that can be presented in a given country or region. In this article, we’ll take a look at intellectual property in Italy to understand how a local partner can and should support you with IP management.

A Local Partner for a Local Network

Firstly, a local partner should have an extensive range of professional experience dealing with trademarks and patents in the Italian system, including a well-established network of experts that can help you in your specific industry or field, for example, technology or engineering. This experience is not only valuable for the network of contacts, but also the knowledge that this partner can provide to your company from a legal and business perspective.

Drawing from previous cases can provide information that could help to resolve unique and complex issues specific to your industry or country of origin. For example, if you are a company based in the US exporting to the EU with US trademark and/or patent registrations, these US registrations are not enforceable in the EU. Therefore, you would need a local partner to file registrations in the EU.

A Responsive Advocate on the Ground

A local partner in Italy can handle cases more responsively as they are on the ground versus a consultant in a foreign country who will have to defer to their own local contacts and may even be handling requests from a different region or time zone. When you deal with a local partner for IP portfolio management, they can address your concerns more directly as they will be handling multiple cases with local officials on a regular basis. This is beneficial to ensure that filings are well supervised and executed with haste.

Filing applications through a local IP firm can also reduce costs as a local Italian partner dealing with numerous applications can provide savings with scale. Additionally, the application procedures will be a matter of course for your local partner, resulting in valuable time savings.

A Full-Service Partner for Cohesive Management

For IP portfolio management, it is generally helpful when your partner can offer a complete service. This may include trademark registration or opposition, anti-counterfeiting surveillance and advice, national and international patent application filing, competitor monitoring, and copyright protection. In this way, you can resolve as many issues as possible without the hassle and cost of dealing with multiple providers. However, not only can they help you solve more issues, but they can help you do it better. When services are fragmented across multiple providers, it can result in a lack of synergy, which can affect your bottom line. A full service offering from an Italian partner can deliver better results as they have a 360-degree view of your local activities and challenges. As such, they can provide valuable feedback in a more timely and informed manner.

Partnering with the right firm can also provide significant cost savings on IP portfolio management. As the number of IP applications increases, the costs associated with filings has also increased, which means a local partner with a strong network can be advantageous to ensure you always receive the best rates. An understanding of the various regional, national and international filing methods and their associated costs will also help your company to save money on potential fees and save time navigating the local procedures.

Not Lost in Translation

One of the challenges for many companies with assets in local IP portfolios is dealing with local officials in their language. By working with a partner based in Italy, you have access to consultants who speak your language as well as the local language. While the Italian Trademark and Patent Office (Ufficio Italiano Brevetti e Marchi) provides some support in English, it can sometimes be limited, so a local partner that speaks the language fluently can help to expedite the process. Since European patent validation filings in Italy must include an Italian translation, a local Italian partner can also ensure that your filings are handled by native Italian speakers. They will also have legal expertise, mitigating any risk of missed deadlines due to missing documents or linguistic errors.

Additionally, when you are searching for a local partner, it is advantageous that they have offices located in Italy as well as international offices. A strong organizational structure both locally and internationally exposes the firm to a variety of projects in different industries, which results in a vast wealth of on-hand industry knowledge. International presence also attracts top talent and encourages employee activity in the broader IP community.

Italy is a contracting state of the Patent Cooperation Treaty (PCT), an agreement between over 150 states, collectively known as the International Patent Cooperation Union, that cooperate in application filing, searching and examinations. When choosing an Italian partner for IP portfolio management, it should have experience handling applications internationally through the Union. An established partner with international ties to the IP community will be well positioned to provide the best protection, advice and value for money to address your IP management needs.


Article by: Franca Acuto