The Italian government has decided that Italy will join the new unitary patent system.

The announcement was first made orally – by the undersecretary of the President of the council of Italian ministers responsible for European affairs – during the meeting of the EU Competitiveness Council of May 28, 2015. This oral announcement was followed by a written announcement published by the same undersecretary on July 3, 2015. On July 7, 2015 the secretariat general of the EU Council officially notified the various delegations of the EU member states regarding such decision of the Italian government.

As a result, when the new system (i.e. the unitary patent package) will come into force it will be possible to obtain protection in Italy, too, by way of the unitary patent, without having to file a separate Italian translation of the granted European patent at the Italian Patent and Trademark Office, as is currently required given that Italy has not joined the London Agreement and does not appear to have any current, official and public plans to do so.

Procedurally, the enhanced cooperation system underlying the unitary patent provides that the European Commission now has a period of 4 months to confirm the participation of Italy in the enhanced cooperation. In addition, and where necessary, during that period the Commission can note that the conditions of participation in the enhanced cooperation system have been fulfilled by Italy, and can adopt any transitional measures necessary with regard to the application of the acts already adopted within the framework of enhanced cooperation.

Furthermore, in order for the system to enter in force Italy will also have to ratify the agreement relating to the Unified Patent Court, which it already signed but which it did not yet ratify. It will also have to harmonize the rights conferred by national, European and unitary patents by amending the Italian Intellectual Property Code (IPC) where necessary, in addition to amending the IPC so as to bring it in line with the provisions of the agreement relating to the Unitary Patent Court.

Despite such further requirements, certainly the decision of the Italian government to join the unitary patent system is one step forward in the direction of achieving one of the goals of the EU legislator, i.e. of introducing a patent that would confer protection throughout the EU territory without the requirement for separate translations of the granted patent or of the granted claims in those countries that presently require such translation for European patents.

We will of course continue to closely monitor any developments regarding Italy and the unitary patent package.

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