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02 September 2013
On July 9 2013 the Italian Senate adopted the Programmatic Report on Italy's Participation in the European Union for 2013, which was pre-approved by the government and expressly states that Italy is now committed, "in order to increase its competitiveness, to implementing all measures which are necessary to go ahead towards the whole system of the Unitary Patent".
The Senate vote followed the May 19 2013 filing of an appeal to the government to adopt the unitary patent system. The appeal was supported not only by Confindustria (the largest federation of Italian industry), Confapi (the Italian federation of associations for small and medium-sized companies), Assobiotech (the Italian association for the development of biotechnology) and Netval (the consortium for the dissemination of university research), but also by some of the most important Italian associations dealing with IP rights protection and anti-counterfeiting issues, including AICIPI (the Italian association of industrial property consultants and experts), INDICAM (the Italian anti-counterfeiting organisation), Sindacato Consulenti (one of the national unions of IP attorneys) and the Centre for Anti-counterfeiting Studies. Many prominent lawyers, university professors and judges in the IP field also supported the appeal, including Marina Tavassi, president of the IP division of the Court of Milan, which handles more than half of all Italian patent litigations.
While trade associations have overwhelmingly expressed their favour for joining the unitary patent system, professional circles (patent attorneys and patent lawyers) are torn on the issue. Several 'senior statesmen' of Italian IP law, as well as some mid-generation professionals, surprisingly took a stand against the unitary patent at a conference. Opponents of the system were also granted a hearing in the Chamber of Deputies in order to illustrate to some members of Parliament why Italy should not join the system.
However, a second conference held on July 12 2013 and organised by the Polytechnic University of Milan addressed the opponents' arguments from a perspective openly in favour of the unitary patent. During the conference, it was pointed out that the advantages of patent unification would be far greater for small and medium-sized enterprises (SMEs), since such companies suffer disproportionately from the costs and fees associated with obtaining a patent and litigating disputes against counterfeiters in a number of European countries. The cost of translating patents granted in national languages – a cost that could possibly be avoided under the unitary patent system – reached €270 million a year, and it is estimated that 20% of this amount is incurred by Italian companies. Added to this cost are the considerable fees associated with the judicial defence of patents in Europe – since such defence must be managed on a state-by-state basis at present, the number of disputes can multiply, thus increasing the risk of conflicting decisions.
Contrary to opponents' assertions, the new system would also not "make Italian firms subject to foreign judges". At present, companies managing trade operations in a global (or at least European) context – including many small companies – may be individually sued for allegedly selling infringing products in each country where the challenged products circulate, and thus be subject to those "foreign judges". On the contrary, under the new system, companies would be subject to one judgment before multinational courts, which would include Italian judges. However, if Italy fails to ratify the convention, Italian judges will not be included in the courts' composition. This would be a very negative development, because Italy has taken significant steps forward in patent matters and has adopted European Patent Office case law and guidelines.
The conference also debunked the myth of increased litigation costs under the new system, as it has been shown that the Unified Patent Court will protect SMEs from excessive costs by replacing numerous national lawsuits – which are presently filed or responded to in each country where the patent is effective – with a single and less expensive court case.
The conference speakers also addressed the claim of opponents of the unitary patent that the system would be skewed in favour of patent holders. It was stressed that the new system will ensure a level playing field in terms of substance, and that litigation will be on a substantially equal footing for parties making and responding to counterfeiting allegations by allowing both to file a unitary suit for assessment of the patent's validity and infringement. In addition, both parties may file a single protective letter with the Unified Patent Court relating to a given patent, which will eliminate the risk of becoming subject to an ex parte preliminary injunction on an EU-wide basis. This is another significant advantage for SMEs, as it would reduce the cost of multiple disputes in different countries. In addition, with a single lawsuit, the new system would invalidate, despite the grant, patents that do not satisfy patentability requirements more easily than at present.
The speakers highlighted the progress made in the latest version of the Rules of Procedure for the Workings of the Unified Patent Court, even though some panellists pointed out the shortcomings that continue to plague these agreements – in particular, the need to reduce possible bifurcation between nullity and infringement actions. It is hoped that this could be eliminated altogether, at least at the appeal stage. Therefore, although the claims of opponents of the unitary patent seem difficult to justify, it is important to focus on the rule making and public consultations underway in order to make the new court as efficient as possible.
The conference concluded with the remark that the unitary patent system, based on EU-wide patent granting procedures, will provide many Italian innovative companies operating in the European market with a convenient alternative to the present system, which would:
In addition, there was strong support for Milan to host not only the local court for Italy, but also one of the future regional courts of the Unified Patent Court, with those in favour noting the logistical advantages of Milan (which will host Expo 2015) and its centrality for Mediterranean and Balkan countries, which represent an increasingly important production centre of Europe.
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