07/02/2014
Italy has long been counted among the ten biggest world economies and currently ranks sixth among the EPC contracting states for number of European patent applications filed per year. However, when, in December 2012, the agreement on enhanced cooperation that led to the adoption of the Regulations instituting the Unitary Patent was signed, Italy opted out, primarily on the basis of concerns relating to the linguistic arrangements.
At the time, several local authoritative sources, such as FICPI Italy (i.e. the Italian association of the International Federation of Intellectual Property Attorneys), voiced their concern that, if unitary patent protection were to extend to Italy, the linguistic regime based on English, French and German would put Italian SMEs at a disadvantage with respect to their foreign competitors, mostly in view of an expected imbalance in translation expenses.
It came as a bit of a surprise when, after strenuously (yet unsuccessfully) challenging the very use of enhanced cooperation on the part of the EU Council, Italy did sign the agreement on the creation of a Unified Patent Court (the “UPC”). By doing so, Italy has put itself in a rather peculiar position that has no equal among EU member States.
On the one hand, once the Unitary Patent Package comes into force, unitary patent protection will not extend to Italy. Therefore, an applicant for a European patent will still need to follow the current post-grant validation procedure for the patent to have effect on the Italian territory. At the same time, nothing will prevent an Italian applicant for a European patent from requesting a unitary patent with effect in all the jurisdictions participating in the enhanced cooperation.
On the other hand, in case of disputes relating to European Patents, be they “classical” European Patents or European Patents with unitary effect, those matters in respect of which the UPC has exclusive competence will be litigated before the Unitary Court even for Italian patentees. The UPC will thus hear all actions relating to infringement, counterclaims for revocation and declarations of invalidity whenever the Italian portion of a European patent is involved.
In particular, infringement actions shall be brought before a local division of the UPC hosted by the Contracting Member State where the actual or threatened infringement has occurred or may occur or where the defendant has its residence or place of business. However, if the Contracting Member State concerned does not host a local division and does not participate in a regional division, actions shall be brought before the central division. Thus, if, for some reason, Italy does not host a local division of the UPC, or at least does not participate in a regional division, infringement actions where both defendant and claimant are Italian residents and the Italian portion of a European patent is involved will have to be brought before the UPC in London, Munich or Paris.
If Italy does, instead, host a local division of the UPC, other unusual scenarios may become a reality. For example, if the Italian owner of a European patent having unitary effect were to sue another Italian company for infringement, the Italian division of the UPC might be competent as the division hosted by the Contracting Member State where the defendant has its residence or place of business. In practice, the Italian division of the UPC would end up being competent in a case relating to a patent that does not even have effect on the Italian territory, while the territorial scope of the Italian UPC division’s decision would extend to the whole area covered by unitary patent protection!
There seems to be a chance, however, that this peculiar situation could soon evolve into something less confusing. Confindustria, the main organisation representing Italian manufacturing and services companies, has recently taken a stand in favour of Italy’s participation in the enhanced cooperation procedure. In an official note published in December 2013, Confindustria has pointed out that, with unitary patent protection, great advantages would actually come for Italian SMEs, that, in Confindustria’s view, currently suffer disproportionately from the costs and fees associated with obtaining patents and litigating disputes in a number of European countries. With this in mind, Confindustria has further explicitly expressed the hope that the Italian Government will rapidly take the steps necessary for Italy to join the other 25 EU Member States that have already signed the agreement on the unitary patent.
Can We Expect The Italian Government To Take On Board Their Advice Any Time Soon?
Some promising signs may perhaps be found in the annual report on Italy’s participation in the EU for 2014 (an official document issued last December in the name of the Presidency of the Council of Ministers and on behalf of the Ministry for European Affairs). The “unitary patent package” is listed in the report as one of the hot topics that are being carefully studied and discussed, and in respect of which the Government and Parliament look forward to making what is referred to as “a conscious decision”.
The Italian Senate has already expressed itself in favour of Italy’s participation in the enhanced cooperation by signing a resolution which would commit the Italian Government to take all the necessary measures to join the unitary patent system. In the Chamber of Deputies, on the other hand, it looks as though discussions are still ongoing. Still, Michele Bordo, President of the European Union Affairs Committee within the Chamber of Deputies, has recently declared that they would intend to reach an agreement and concretely define their position by June.
It would not come as a major surprise if, in the end, it took them longer than another three or four months, but it is at least a good sign to see that these matters are being carefully considered. We will keep an eye on any relevant news coming from the Italian Parliament and promptly share them with you, so watch this space…
Note: The so-called Unitary Patent Package is composed of three agreements: a regulation implementing the enhanced cooperation procedure in the creation of a unitary patent protection; a regulation setting out language and translation arrangements needed to implement the unitary patent protection; and an agreement on the Unified Patent Court (the “UPC”). A detailed analysis of these key aspects can be found here and a presentation on the Unitary Patent and the UPC can be viewed here.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
