The end of this week will see a reversal of the Italian government’s stance on patent fees, exactly one year after it abolished them. The government is expected to issue an implementing decree by the end of the January, setting out how much those fees will be.

Filing fees and annuities were eliminated on 1 January last year in an attempt to stimulate national innovation, but this was criticised by many IP practitioners and Italian companies, who said that there was little evidence the policy had encouraged local applicants to file more patents.

‘The majority of Italian patents belong to foreigners so abolishing patent annuities and official fees has not helped Italian industry,’ Andrea Damonti, an attorney at Italian firm Modiano & Associati told MIP Week. ‘By removing the fees, it meant that Italian industry would have to respect a patent owned by a foreign company for 20 years without the patent owner having to pay anything for it.’

The new patent filing and renewal fees are expected to be slightly lower than those previously charged by the Patent Office. In particular, applicants will not have to pay an annual fee for the first four years of a patent's life and filing fees are set to be much lower for IP owners who file their applications online.

However, Antonio Pizzoli, an attorney at Società Italiana Brevetti, said that although initial filing fees for design registrations in Italy would be relatively cheap, far higher fees are expected to be charged from the second five-year period of a design's life than those charged by The Office for Harmonisation in the International Market (OHIM), for a single design registration.

‘IP owners will have to do some calculations,’ he said. ‘If they have lots of designs to be protected in Italy then it may be cheaper to register nationally, but if they have a single design it will be far cheaper to register at OHIM.’

At the moment it is still unclear how the new fee income will be used. In the past, annuities were paid into the government's general fund, but Mario Leone, an attorney with Leone & Spadaro, said he expected some of the money to be used to fund the introduction of a novelty search for those patents filed directly with the Italian office.

Many lawyers have welcomed the new search, saying that since nationally filed patents are not examined, patent owners have only been able to establish the scope of protection during the course of litigation. But Modiano & Associati's Damonti said that since many Italian patents are filed through the European Patent Office (EPO), ‘the new novelty search will really only be of interest to smaller companies that file nationally’.