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An update on the Italian position on the Unitary Patent Package – “Meglio tardi che mai”


15th Oct 2015

Italy has at last put aside its difference of opinion regarding the linguistic regime set out in the regulations for the creation of Unitary Patent protection. This should make the Unitary Patent more attractive to those seeking patent protection in Europe.

As an Italian living and working in the UK I am at times still caught by surprise by the richness of the English language. The origin and meaning of certain idiomatic phrases and sayings intrigue me, and some of them even “take me aback”. Which, for example, was apparently adopted from nautical terminology and was originally used to describe a ship unable to move forward because of a strong headwind pressing its sails back against the mast! As patent attorneys, we naturally become quite attentive to how words are used, since being aware of nuances in meaning is a critical skill in our profession, and this constantly fuels my inner linguist’s curiosity.

At other times, I smile to myself on realising that some idioms are common to both my native Italian and English. One of these is, for example, “better late than never”, which translates as “meglio tardi che mai” in my mother tongue. As we all know, this proverb is used to indicate that it is better for someone or something to be late, than never to arrive or to happen. At least in my homeland, whilst this idiom is typically used to express relief, it may also convey a touch of sarcasm or express a mild reprimand.

The phrase “better late than never” apparently made its first appearance as a Latin proverb – “potiusque sero quam nunquam” – and was used by historian Titus Livy in his History of Rome as early as around 27 BC. I hope my fellow countrymen and women won’t mind that I instinctively uttered an idiom that is so thoroughly ingrained in the Italian culture when, only a few days ago, I found out that Italy had officially become the 26th signatory of the agreement on enhanced cooperation on the Unitary Patent protection.

Italy had originally opted out of the agreement on enhanced cooperation that led to the adoption of the Regulations instituting the Unitary Patent. This was mostly to do with concerns relating to a linguistic regime which some regarded as potentially disadvantageous for Italian SMEs with respect to their foreign competitors, owing to an expected imbalance in translation expenses. On the other hand, however, Italy had subsequently signed the agreement on the creation of a Unified Patent Court (UPC). As we have discussed previously, this had put Italy in a uniquely ambivalent position among all the EU member States.

With a delay of almost two years, Italy has finally ‘joined the club’ and, like most of the other participating EU member States, is now invited to ratify the Agreement on the UPC. This means that a unitary patent will be valid also in Italy. In the press release of 30 September 2015, the European Commission has defined this as “a major breakthrough” in view of Italy’s position in Europe as the fourth biggest market in terms of patent validations.

It seems to me that this should make the Unitary Patent more attractive for companies and inventors. Had Italy not reviewed its position, applicants seeking to obtain patent protection all over Europe would have needed to go through the current national validation procedure in Italy, in addition to filing a request for their European patent to have unitary effect. This would have entailed the filing of a translation of the whole patent specification in Italian and the payment of a fee.

With Italy on board, by contrast, applicants opting for a unitary patent will directly obtain protection in the Italian territory as well. Therefore, a more straightforward grant and validation procedure will be available to companies and inventors, whereby applicants will only be required to interact with one, centralised authority (namely, the EPO). Further, it should be reasonable to expect that the overall costs for applicants will be lower, since the specific translation requirements set by Italy (one of the EPC contracting States that have not accessed the London Agreement) will no longer have to be met.

Whether Italy has completely overcome the original concerns about the language-related regulations remains perhaps to be seen. In fact, upon requesting to access the enhanced cooperation, Italy’s State Secretary for European Affairs has chosen to mention that this would “not prejudge Italy’s well established position on the EU language regime” and would “not constitute a precedent”. However, it seems to me that good judgement has eventually prevailed and – as the EPO President Benoît Battistelli had noted earlier this year – Italy has recognised at last that remaining out of the Unitary Patent club would have put Italian enterprises at a disadvantage compared to those in the other 25 Member States that had signed the agreement from day one. All in all, I personally think that good old Titus Livy would be quite keen on using his proverb once more, if he were around to write a new chapter of his History of Rome.

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 any action in reliance on it.

Author
Andrea Civera
Senior Associate
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Would you like to know more? You can talk to Andrea Civera who will be able to help. Call +44 (0)20 7242 0901

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