The Board of Appeal with decision No. 11/11 delivered its judgement on the possibility of applying the remedy of the “continuation of the procedure” also to the validation of a European patent, reaching the conclusion that article 192 of the Industrial Property Code (IPC) is valid also for the term of three months from the date of grant of the European patent within which it is necessary to file the Italian translation in order to provide for validation of the patent in our country.

The refusal of the Italian Patent and Trademark Office (IPTO) to grant a request of “continuation” for the failed validation within the terms was based principally on two arguments. The first was that the term of three months fixed by law for the filing of the translation should have been interpreted as peremptory, since non-observance thereof would imply that the patent should be “considered, from the outset, without effect in Italy”.

The second point was more contorted (or subtle, to use the words of the Board): starting from the observation that article 192 IPC establishes that the ruling of the “continuation” is not applicable to the terms fixed by the subsequent article 193 IPC for “re-establishment of rights” (“two months from the removal of the cause justifying the non-observance” and “one year from the expiry date of the unobserved term”), the IPTO reached the conclusion that permitting the use of the advantage of the “continuation” for the filing of the translation of the granted European patent would in practice have postponed the final expiry of the terms for “re-establishment” by two months, in contrast with the letter of article 192 IPC.

The argument of the claimant instead was based primarily on the consideration that the “continuation” was applicable to other peremptory terms, provided not expressly excluded by article 192. Moreover, the aim of the regulation was precisely that of preventing that non-observance of the term would bring about the loss of the right. Lastly, the claimant noted that the two remedies of “continuation” and “re-establishment” were to be considered parallel and independent, the rationes decidendi being different, as likewise the conditions and terms for the respective applicability.

In the reasons of the decision the Board analyses the three remedies related to the terms to be observed in order to acquire and maintain industrial property rights, separating the remedy of the extension from those of “continuation” and “re-establishment” since the former must be adopted before the expiry of the related term, while the others presuppose this expiry. Furthermore, the Board notes how “continuation” and “re-establishment” also share the purpose of avoiding the negative effects that result on expiry of the term.

After highlighting the points in common, moreover, the Board then underlines the diversity existing between the two remedies. The remedy of the “continuation” can be seen as a period of grace leading to an automatic extension of the unobserved term provided that within two months from the expiry of said term, the relative request is filed, the omitted act is completed and the fee is paid. This automatism is missing instead in the remedy of “re-establishment” that can be applied only when there is an excusable non-observance, i.e. having occurred despite the adoption of the “due care required by the circumstances”.

Also the term of two months within which it is possible to take steps is different in the two cases: if in the “continuation” it starts from the expiry of the unobserved term, in the “re-establishment” it starts from the removal of the cause that brought about the non-observance, therefore from a time that may be reached long after the unobserved term. In fact the law takes care to place the final limit of one year from the unobserved term within which to carry out the “re-establishment” procedure.

In view of these considerations, the Board concludes that the two remedies cannot be interpreted in relation one with the other. It stems from this that the decision of the IPTO to refuse the application of the remedy of the “continuation” to the failed filing of the translation of a granted European patent is illegitimate, article 192 IPC not containing any preclusion to the use of the “continuation” for the case of the national validation of the European patent.

The practical significance of the decision of the Board is considerable, but Italian agents cannot yet crow over victory: the IPTO has submitted an appeal to the Court of Cassation and it will therefore be necessary to await the decision of the Supreme Court in order to determine how to behave in the case of non-observance of the term of three months for the validation of a European patent in Italy.

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