Last developments and consequent forecasts In 2016, the Italian government approved the draft law for the National ratification of the Agreement on a Unified Patent Court (UPCA) and provided for the necessary amendments to the Industrial IP Code and to the regulations concerning Specialized Court Sections (IP specialized courts). In particular, Art. 66 of the IP Code was amended so to explicitly discipline indirect infringement. In addition, Art. 3 of leg. decree 168/27.06.2003 on the authority of Specialized Court Sections was amended so to identify and discipline the specific cases of exclusive authority of the Unified Patent Court , as well as to provide for the transitional regime set forth by Art. 83 UPCA.
At the end of 2016, we received confirmation that Milan will be hosting a local division of the Unified Patent Court. The division will have its seat at the local Courthouse.
On 10 February 2017 Italy has deposited their instruments of ratification with the Council of the European Union, thus becoming the 12th EU Member State to take part to the Agreement.
At this stage, only the ratification of Great Britain and Germany is missing for the UPCA to enter into force and for the European Patent with Unitary Effect to be applicable.
Despite the outcome of last year’s “Brexit” referendum, it is not so unlikely that Great Britain will soon deposit their instruments of ratification. Rumor has it, that this might well happen within next March.
Germany should be next, and it is common feeling that the Provisional Application Phase (PAP) of UPCA might start by the end of May. The PAP will basically have organizational purposes: they will set the bases and implement all features required for the Court to enter into force, for example by appointing the judges and testing the IT system. All things considered, the Court might enter into force by the end of 2017.
What is changing? The Unified Patent Court, having its seats in various European cities (including Milan), will have exclusive authority on the judgment of disputes in connection with the validity and infringement not only of European Patents with Unitary Effect, but also of “classical” European Patents (irrespective of their grant date).
The European Patent with Unitary Effect will be an additional tool for the protection of patent rights, together with the classical European Patent. Once the European Patent with Unitary Effect has entered into full force, it will allow for consistent and uniform patent protection in a considerably large part of the European Union.
What is next in the proceedings? During a transitional regime of a few years, classical European Patents may be excluded from the exclusive authority of the Unified Patent Court through a specific “opt-out” request. As a consequence of such a request (to be filed before the UPCA enters into force – probably starting from September 2017), patent validity and infringement issues will still be judged by national Courts, with no changes with respect to the current situation and practice.
As soon as the European Patent with Unitary Effect regime is fully in force, a request for Unitary Effect will have to be made within one month from the date of grant of a European Patent.
Looking forward of all developments, we are ready to take advantage of the new opportunities that seem to be available.