Wednesday, 16 January 2013

The unified patent package: a word from Italy

A good deal has been written about the prospects of the new European patent package -- but we have not heard very much from Italy -- a country that has been regarded as something between peripheral and irrelevant on account of its reluctance to join the new scheme and its challenge, together with Spain, of the legal basis for the version of "enhanced cooperation" that the EU has adopted in pressing ahead with a "27 minus 2 regime.

Given Italy's size and sophistication, the country cannot be ignored -- however much one may wish to do so for the sake of administrative convenience or political spite. So this blogger was pleased today to receive this bulletin from Italian IP practice Modiano & Partners, which contains the following message:
" ... with the Italian political elections coming up in the 1st quarter of 2013, the Italian approach to the entire package might change. Indeed, it is possible that Italy will decide to participate in the jurisdictional part of the system, by signing the agreement establishing the Unified Patent Court together with the other 25 member states already adhering to the package at present [the idea of a post-election opt-in makes it sound like a party political decision -- but is it? One imagines that arguments for and against joining in would cross traditional party political allegiances. Perhaps the decision will be made on economic ground or in return for support from other EU states on other issues. Let's see what happens].

In such case, both European patents designating Italy and future unitary patents for which there is also a parallel designation of Italy might fall within the competence of the Unified Patent Court with respect to the Italian portion as well, although Italy would presumably continue to require a separate designation, the filing of an Italian translation at the Italian PTO upon grant of the patent by the European Patent Office, and the payment of national annuities to the Italian PTO after grant.

On the other hand, for as long as Italy does not join either the new jurisdictional system nor the unitary patent system, it will remain necessary, for those wishing to defend their patent rights or challenge third party patent rights in Italy, to file their actions at the sections of the Italian civil courts specializing in intellectual property. Such specialized sections were instituted several years ago and, while the number of cases handled by each section varies, they have all gained significant experience and expertise in the matter of patent litigation, thereby providing a reliable and efficient system of patent right protection in Italy [this places Italy in the same position as the UK, in having worked hard to improve the performance of a domestic IP dispute resolution system which many are unwilling to sacrifice for the uncertainty of that of the new European patent package] ..."
PatLit looks forward from hearing from Spain -- Italy's fellow cynic over the new package but a country with a very different legal and commercial ethos.

No comments: