Italy formally joins countries behind unitary patent regime

The European Commission confirmed the move in a statement on Wednesday.

"Today, Italy has joined the unitary patent and become the 26th member of the enhanced cooperation on the unitary patent protection," the Commission said. "This is a major breakthrough as Italy is the fourth biggest market in Europe in terms of patent validation."

The enhanced co-operation mechanism is a legal tool under the Lisbon Treaty that permits nine or more EU countries to use the EU's processes and structures to make agreements that bind only those countries. It is through the enhanced co-operation mechanism that plans to develop a new unitary patent regime have been developed.

Italy had been one of the few EU countries not involved in pushing for a new unitary patent framework, and had joined with Spain in pursuing a legal challenge against the initiative. However, that legal challenge failed and, although Spain continued, unsuccessfully, with separate additional legal action against the proposals, Italy earlier this year outlined its intention to embrace the new unitary patent framework.

The Commission confirmed to Out-Law.com the procedural formalities that were completed on Wednesday.

"With its application to join the enhanced cooperation, Italy endorsed the unitary patent regulations," a Commission spokesperson said. "With the Commission decision confirming that Italy joins the cooperation, Italy is automatically bound by them without further acts necessary from the Italian side. However, the regulations only start to apply once 13 [EU countries have] ratified the agreement on a Unified Patent Court."

Spain and Croatia are now the only EU countries not yet to have adopted the unitary patent regulations.

The unitary patent regulations provide part of the legal framework that will underpin the new unitary patent regime. The rules will make it possible for businesses to obtain patent protection for their inventions in participating unitary patent countries through a single patent application to the European Patent Office (EPO) and without having to further validate the patent in each of the individual countries.

However, unitary patent protection will only apply in those states which sign and ratify the Unified Patent Court Agreement as well as adopt the unitary patent regulations. Ratification of the Agreement would give legal recognition to the new Unified Patent Court (UPC) as a judicial forum for settling disputes concerning the validity and alleged infringement of new unitary patents.

Italy has still to ratify the Agreement, like most other countries, the Commission said.

"So far 8 member states have ratified the UPC: Austria, France, Belgium, Sweden, Denmark, Malta, Luxembourg and Portugal," it said. "The Commission is calling for a rapid agreement on technical issues. It calls also on all remaining participating member states to ratify the Unified Patent Court Agreement as soon as possible so that the unitary patent package comes into force by the end of 2016."

The UK's Intellectual Property Office told Out-Law.com in June that the UK's ratification of the Unified Patent Court Agreement will not take place this year. The three largest EU countries in terms of number of European patents, currently Germany, the UK and France, must all ratify the Agreement for it to have effect.

Benoît Battistelli, president of the EPO, recently praised Italy's move to get behind the unitary patent regime. In an EPO blog he said: "Italy’s accession will … render the unitary patent more attractive to companies from other European countries and from across the globe. The Italian market is the fourth most important in the European Union both in terms of GDP and population. It is also an important country for European patents. On average, European patent holders validate their patents in three to four countries and Italy is the fourth most designated country, with a validation rate of 44% at present."

Experts in patent law Victoria Bentley and Deborah Bould of Pinsent Masons, the law firm behind Out-Law.com, have outlined the choices businesses face as a result of the new unitary patent and Unified Patent Court regime in relation to how they can protect inventions and enforce patent rights in future.