As is known, after about 40 years of debates, on December 11, 2012 the EU parliament has given the green light to the so-called “unitary patent package”. This package entails the creation, not before January 1, 2014, of a unitary patent with effect in 25 of 27 EU member states, i.e. with the exclusion of Italy and Spain, and of a Unified Patent Court which will be competent to hear cases and render decisions applicable in such 25 member states.

As is also known, Italy (and Spain) have filed actions at the Court of Justice of the European Union (CJEU) against the unitary patent package, and particularly against the use of enhanced cooperation for establishing such patent package. On December 11, 2012, the Attorney General rendered his opinion in which he concluded that the Italian and Spain actions should be dismissed as it was not wrong to resort to enhanced cooperation in this case.

At this stage, it remains to be seen whether the CJEU will follow the Attorney General’s recommendation and indeed dismiss the cases. Should the EJEU not dismiss the cases, then this might represent a new obstacle in the way of the entry into force of the new system.

At the same time, it appears that, 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.

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 neither 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.

Our specialized litigators and patent attorneys regularly render patent opinions and handle patent litigation cases in Italy, very often on behalf of foreign clients and in the presence of parallel foreign litigation in the EU and abroad. They will of course continue such activities whether within the framework of the current system or in the context of the new unitary patent package, if and when Italy will indeed join part of all of it.

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