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Italy drops opposition to EU unitary patent reforms

The Italian government has outlined its intention to adopt rules that will give effect to a new unitary patent framework for Europe that it had previously opposed. 

The Ministry of Economic Development in Italy said "accession to the unitary patent" is now "a priority" after the latest legal challenge against the unitary patent regime was quashed earlier this month, according to an unofficial translation of a statement it has issued in Italian.

Most EU countries have been working to develop a new legal framework that will make it possible for businesses to obtain EU-wide patent protection for their inventions through a single patent application to the European Patent Office (EPO) and without having to validate the patent in each of the individual countries in which they wish to have patent protection.

Italy had previously joined with Spain in challenging the legitimacy of the legislation underpinning the unitary patent regime. The countries' governments had claimed, amongst other things, that the unitary patent framework had been developed by the majority of other EU countries in a way which breached EU law. The challenge was dismissed by the Court of Justice of the EU (CJEU) in 2013.

One of the other criticisms raised by Italy and Spain in that legal challenge was with the requirement that applications for unitary patents be translated into English, French or Germany. They had argued that that requirement would create a barrier to trade and distort competition "to the detriment" of businesses in their countries.

Spain launched a separate further complaint against the language regime as part of two additional legal challenges that it brought against the unitary patent reforms. However, earlier this month the CJEU ruled that the language translation requirements are "appropriate and proportionate" to the "legitimate objective" being pursued, which is to help businesses to obtain Europe-wide patent protection in a way that is cost effective. The Court also rejected Spain's other complaints about the unitary patent framework.

Italy's Ministry of Economic Development said that the legal basis for the reforms is now "not in discussion" after Spain's latest legal challenges were dismissed.

Despite its legal challenge, Italy did previously sign an international treaty, the Agreement on a Unified Patent Court (UPC), which will establish and give legal recognition to the UPC as a judicial forum for settling disputes concerning the validity and alleged infringement of new unitary patents.

However, the unitary patent will only apply in those states which both sign and ratify the UPC Agreement and also participate in the separate Unitary Patent Regulation. Currently, 25 countries in the EU have adopted the Unitary Patent Regulation. Spain, Italy and Croatia have not done so. As it stands, 25 countries have signed the Agreement on a Unified Patent Court, with only Spain, Poland and Croatia having not done so, although the majority of the participating states have still to ratify the Agreement nationally.

Italy said it now intends to also adopt the Unitary Patent Regulation, the legislation underpinning the creation of unitary patent protection, as the reforms are "in line with the interests of a country that focuses on innovation and internationalisation of their companies".

Italy said it hopes getting behind the unitary patent reforms will lead to more "foreign direct investment" in the country and allow it to influence the ongoing discussion about what fees will be charged for renewing unitary patents.

Expert in the unitary patent reforms Victoria Bentley of Pinsent Masons, the law firm behind Out-law.com, said Italy's indication that it will now get fully behind the unitary patent reforms is welcome.

"Italy is the only member state to have signed the UPC Agreement but not signed the Unitary Patent Regulation," Bentley said. "As this stands, a unitary patent would not provide patent protection in Italy, although an Italian applicant would be able to apply for a unitary patent which would provide protection in those member states that have ratified the UPC Agreement. In the event of a dispute relating to a unitary patent owned by an Italian company, the permutations for which court has competence to hear the dispute become quite complex." 

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