Author: Marco Conti

The decision of the Court of Justice of the European Union to dismiss Italy’s Unitary Patent legislation complaint may have interesting consequences for the country, as Cristina Biggi and Marco Conti explain.

Published on World Intellectual Property Review

The need for a common, Unitary Patent (UP) system has been felt by European countries since the 1960s; the goal was partially met with the establishment of the European Patent Office (EPO) in the 1970s, which centralised the patent procedure up to grant among 38 countries in the European area. The European patent granted by the EPO is not a unitary title, however, but yields a bundle of national patents to be litigated before corresponding national courts.
In this light, discussions about the institution of a unified patent protection within the EU were carried out by EU member states from 2000, leading to the approval of regulations EU/1257/2012 (on UP protection) and EU/1260/2012 (on translation arrangements) on December 17, 2012.
Such regulations were agreed upon by 25 member states out of the 27 in the EU, excluding Italy and Spain. In order to establish the agreements in the framework of the EU without unanimity, the 25 EU member states resorted to ‘enhanced cooperation’, which was authorised by the European Council on March 10, 2011.
According to the EU/1260/2012 regulation, the official languages of the system are those of the EPO: English, German and French. According to the EU/1257/2012 regulation, the procedure up to grant is sub-contracted to the EPO, which has legal personality and is ultimately subject to the authority of the member states; as regards the law applicable to patent litigation, the regulation makes reference to national law.
In order to centralise patent litigation, a Unified Patent Court was established by an agreement signed on February 19, 2013 by 25 states (Italy signed, Spain and Poland did not), which is still to be ratified. It is an intergovernmental treaty between the participating states, outside the framework of the EU.
Hence, the UP system outlined by the regulations approved through enhanced cooperation does not provide a ‘community patent’ in the manner of the Community trademark or the Community design, although it will allow patentees to obtain patent protection in almost all EU states by paying a single, flat renewal fee, and to litigate the patent before a central court.
Italy and Spain appealed against the Court of Justice of the EU (CJEU) decision of March 10, 2011, authorising enhanced cooperation, on the grounds that such regulations impact on competition because of an unbalanced language regime, rendering enhanced cooperation itself inadmissible under Article 326 of the Treaty on the Functioning of the EU.
Indeed, apart from the language issue, the UP system appears biased in favour of patentees. In Italy, many are concerned that the small and medium-sized companies, which play an important role in the Italian economy, would be harmed.
On April 16, 2013, the CJEU dismissed the actions of Italy and Spain against enhanced cooperation. Spain filed another action against the CJEU’s decision (regarding, in particular, regulation 1260 on translation arrangements), while Italy did not pursue the case further.
The consequence is that the UP system outlined in the regulations and in the agreement on Unified Patent Court will come into force: it is just a matter of time. This is a defeat for those (eg, in Italy and Spain) who wished a more important role for the EU in the system.
The Italian parliament has now to take some decisions: whether to join the enhanced cooperation and subscribe to the regulations on the UP (including the language agreement), or to maintain its current position, and whether to ratify the Unified Patent Court agreement.
Some (minor) changes to the patent system are still possible: regarding regulation 1260 on translation arrangements, changes may be requested by the CJEU, depending on its pending decision on the Spanish action. Regarding the Unified Patent Court agreement, the implementing regulation is still a draft and was open to public discussion until the beginning of October.
Broadly speaking, in Italy there is the hope that possible changes go in the direction of a patent system which is more balanced and where English is foreseen as the only language for litigation before the Unified Patent Court.
Looking into the different opinions in Italy, the scenario appears quite polarised between those who focus on the advantages of being part of the system (above all, the possibility to have Italian judges in the Unified Patent Court and an Italian court for the Unified Patent Court local division), and those who stick to the concerns about being part of the system.
Roughly, one may say that a negative opinion prevails among lawyers and university professors, while the Italian association of patent attorneys operating in industries and companies (AICIPI) and various industrial associations, such as Confindustria, Confapi, Assobiotec, Netval and INDICAM (the Italian anti-counterfeiting organisation) are in favour of joining the system.

Cristina Biggi is a European patent attorney and head of the chemistry and biotech patent sector at Bugnion Intellectual Property. She can be contacted at [email protected]

Marco Conti is a European patent attorney at Bugnion Intellectual Property. He can be contacted at [email protected]

Unitary patent, Italy, CJEU, Unified Patent Court, Italian parliament