European unitary patent: the national legislation is adapted

Legislative Decree No. 18 of 19th February 2019 was published in the Official Journal on last 12th March. It will be in effect from 27th March and it will implement the delegation for the adaptation of national legislation to the provisions of Regulation (EU) No. 1257/2012 on the creation of unitary patent protection (the so-called European patent with unitary effect), as well as to those of the Agreement on a Unified Patent Court, ratified and made enforceable by Law No. 214 of 3rd November 2016.

As known, the purpose of the new system is to issue a patent certificate constituting a unitary and independent title without resulting in a cluster of national patents (as is the case for the European patent). In particular, art. 5 of Reg. n. 1257/2012 confer on its proprietor the right to prevent any third party from committing acts against which that patent provides protection throughout the territories of participating Members States in which it has unitary effect.

In addition to the creation of the unitary European patent, the Unified Patent Court will have exclusive jurisdiction in matters of validity and infringement (infringement claims, counterclaims for licenses, applications and counterclaims for revocation of patents and invalidity of CPCs, non-counterfeiting applications, preliminary proceedings, claims for damages, etc.) of both the new European patents with unitary effect and the classic European patents.

The new legislative decree amends some provisions of the Industrial Property Code relating to patent protection, with particular reference to the provision of the European patent with unitary effect.

In particular, this legislative decree provides for the application of Italian law to cases concerning the European patent granted for Italy pending until the entry into force of the Agreement on the Unified Patent Court and to those cases promoted after the entry into force of the Agreement in front of the Italian judicial authority as a result of the transitional regime.

Despite this legislative decree, it is not yet clear when the unitary European patent will enter into force.

The entrance into effect will be when the Agreement on the Unified Patent Court will be ratified by at least 13 Member States, of which France, Germany and the United Kingdom must necessarily be among the Member States.

The uncertainty related to Brexit is therefore significant, with regards to a possible incompatibility of Great Britain’s exit from the European Union with the agreement on the unitary European patent, and with regards to where the section of the central division of the Unified Patent Court will be, currently it is located in London and competent for chemical and pharmaceutical patents (as regards the headquarters of the court, you can refer to our article on the subject).

Another obstacle to entry into force is the ratification by Germany, which is currently the subject of an appeal to the German Constitutional Court. In particular, the German Constitutional Court will establish whether the Unitary Patent and the Unified Patent Court are compatible with German law.

For the ” launch ” of the unitary European patent and the related court we will therefore have to wait for news from Germany and especially understand how the Brexit issue will be resolved.