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Italy claims unitary patent plans are unlawful and will distort competition

Italy has joined Spain in launching a legal challenge against plans by the other 25 EU member countries to establish pan-European patent protection.12 Aug 2011

Italy applied to the European Court of Justice (ECJ) asking it to rescind an EU decision taken in March that allowed the 25 countries to press ahead with proposals to create a single mechanism for gaining patent protection across Europe. The 25 countries' enhanced co-operation agreement is unlawful and will distort competition within the EU, Italy said in its ECJ application.

Certain rules governing the creation of laws within the EU and how they operate are set out in the Treaty of the European Union and the Treaty on the Functioning of the European Union.  Italy contests that the 25 countries' plan was wrongfully approved because it violates those binding agreements between all EU countries.

Plans to establish a cheaper and more efficient way for inventors to gain patent protection across Europe have been mooted for years.

At the moment obtaining Europe-wide patent protection is only possible by validating a patent registered with the European Patent Office (EPO) in each individual country. To be valid in a country a patent must be translated into its language. The European Commission has sought a cheaper system because of what it has said is the prohibitive cost of that process.

In December, 12 member states got together to push for new unifying patent protection regulations. The Lisbon Treaty permits a faction of 9 or more EU countries to use the EU's processes and structures to make agreements that bind only those countries. Since December a further 13 countries have backed the proposals which the European Commission set out in April.

Italy and Spain have objected to the plans that included proposals that patent applications and approvals should be made available in at least one of English, French and German.

The UK's Intellectual Property Office (IPO) is seeking views on Italy's case, according to a report by the IPKat. Member states can send written observations to the ECJ within two months of receiving notification of an ECJ case, the IPO said, according to the report.

The deadline for observations to be sent to the ECJ ahead of the pre-hearing in Italy's case is 27 September, the IPO website said. The deadline for public observations on the case is 16 August, according to IPKat.

The UK and its unitary patent agreement co-operators received a boost in June when the EU's Competitiveness Council approved plans for a new system for unitary patent protection.

The Council, which is composed of different foreign affairs, industry and research ministers dependent on the topic of discussion, approved two proposed new regulations to help establish the unitary patent, the UK Government said at the time.

The regulations refer to the technical details of the patent itself and the languages that inventors will have to file unitary patent applications in, the Government said.

The ECJ, which is obliged to hear the cases brought by Italy and Spain, previously forced the 25 other EU countries and European Commission to revise their unitary patent plans in March.

In an opinion the court stated that plans to create a single court system for patents issued through the EPO would be incompatible with EU law. The system would interpret EU law but operate outside of the EU courts system, leaving citizens without recourse to action through the EU courts, it said.

Since then the EU's Council of Ministers has published draft proposals for a dispute system that works within the existing EU judicial structures.

The European Commission's unitary patent proposals need to be supported by the Council of Ministers and the European Parliament in order to be put in place.

The Commission's last attempt came last year when it announced proposals to use automated translation software to translate parts of patents. EU ministers rejected the idea.