Italy adheres to the unitary patent

Further to our newsletter of December 27, 2012, we inform you that the Italian Government officially confirmedItaly’s adherence to the unitary patent; the decision was announced by the Secretary of State, Sandro Gozi, with astatement published last July 3 on the website of the Department of European Affairs.

The unitary patent will have effect in 26 out of the 28 present EU member states; that is, in all EU member statesbut Spain and Croatia, which may however enter the agreement at any time.

It will be effective from the date of the entry into force of the agreement on a Unified Patent Court (UPC) which, onits turn, will enter into force once ratified by 13 EU member states, including France, Germany and the UK.

Atpresent, Austria, Belgium, Germany, France, Malta and Sweden have ratified the agreement; it is howeverunlikely that it will enter into force before the referendum on the staying in the EU of England, that the EnglishPrime Minister David Cameron has promised to celebrate in 2017.

The Unitary patent will be granted by the EPO under the provisions of the European patent Convention to whichunitary effect for the territory of the 26 participating states is given after grant, at the patentee’s request.

Inpractice, the request for unitary patent shall be filed with the EPO within 1 month from the grant of a Europeanpatent; once entered into force, it may therefore be requested also on the basis of already pending EP.

After grant of the Unitary patent, no further human translations will be required, although high quality machinetranslations will be available for free in all EU official languages for information only (i.e. without any legal effect):the unitary patent will thus provide legal protection in the 26 EU member states in the language of the procedurebefore the EPO.

The unitary patent will co-exist with national patents and with the classical European patent with which it sharethe legal basis and the procedure for grant, and from which it differs in the post-grant phase only.

Applicants foran EP application will have therefore the option to obtain protection:

a) in the 26 participating EU member states either by requesting the unitary patent or on the basis of theEPC traditional procedure;

b) in Spain, Croatia and in the remaining EPC non-EU contracting states on the basis of the EPC traditional

Under the unitary patent system, the EPO will also be in charge of centrally administering the patent, levying theannual renewal fees and distributing them to the participating EU member states.

The fact that unitary patents will be treated as a single patent, no longer requiring to be validated andadministered nationally, is expected to lead to massive savings in terms of time and costs.

The level of annualfees has not however been set yet; based on the available information, they will be set low enough to be attractiveto users but high enough to ensure cross-subsidy of European patent grant procedure at the EPO.

On the basis of current draft agreement, the UPC will have exclusive jurisdiction in respect of actions forinfringement of European and unitary patents and SPCs, declarations of non-infringement of European andunitary patents, revocation of European and Unitary patents, declaration of invalidity of SPCs and injunctions.

As soon as more information is available, both as regards the unitary patent and about the UPC, we will promptly informyou.