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Enhanced cooperation - An update from Italy

24 March 2015

Out of the three instruments comprising the "unitary patent package", Italy has, to date, only signed the agreement in respect of the Unified Patent Court ("UPC") and opted-out of the enhanced cooperation procedure that led to the adoption of the Regulations instituting the unitary patent ("UP") itself.

By Hogan Lovells Associate Maria Luigia Franceschelli

Out of the three instruments comprising the "unitary patent package", Italy has, to date, only signed the agreement in respect of the Unified Patent Court ("UPC") and opted-out of the enhanced cooperation procedure that led to the adoption of the Regulations instituting the unitary patent ("UP") itself.

However, recently rumours have been spreading that Italy's position on participation in the enhanced cooperation procedure may be shifting.

On 18 February, the Italian Minister of Economic Development was asked to opine in front of the Chamber of Deputies on the possible participation of Italy in the unitary patent package.

According to the Minister, the possibility of Italy's participation is "one of the Government's priorities". With this in mind, the Minister noted that they are in the process of evaluating the financial implications of such a choice, taking into account the stakeholders' interests.

One of the deputies, intervening in the debate, highlighted that Italian companies would be heavily jeopardized by being excluded from the unitary patent system.  In particular, due to the fact that the costs of filing a patent application in all Member States would be much higher than for filing a single UP application.

Accordingly, it now appears that the general opinion of the Government is favourable to the full participation of Italy in enhanced cooperation.  This is despite that fact that the language issue and the partial reimbursement of translation costs were raised as possible obstacles in the process.

However, not everybody in the Intellectual Property community in Italy share the same opinion.

Most likely induced by the above questioning, the Minister submitted a formal "flash consultation" of Italian stakeholders and IP experts, asking them whether Italy should fully participate to UP and UPC. The consultation offered three possible answers:

1) Yes, Italy should join enhanced cooperation and implement the UPC Regulation;

2) No, Italy should not join enhanced cooperation but should implement the UPC Regulation only;

3) No, Italy should neither join enhanced cooperation nor implement the UPC Regulation.

Of all the expressed opinions, only two were made public, both of which firmly stated that Italy should not participate in the unitary patent package. According to these opinions, the UP/UPC system is tailored to big foreign enterprises and would, therefore, most likely disadvantage small and medium enterprises, such as the ones acting in the Italian market. As far as UPC is concerned, it was argued that the related costs would be excessive and unreasonable for small and medium enterprises and thus implementation of the UPC Regulation would not be recommended.

That being said, the Minister did not disclose the reasons behind the launch of the flash consultation or whether there is a formal agenda in place as to enhanced cooperation. All in all, it remains difficult to predict whether or not the recent interest shown by the Italian Parliament will actually lead to a full participation of Italy to the "unitary patent package".

By Hogan Lovells Associate Maria Luigia Franceschelli

 
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