(Finance) – Italy has always been a lively country in thepatent scopeas evidenced by 4,919 questions Of patent filed in 2021 at theEuropean Patent Officeor (EPO) and the 38,374 filed in 2022 at the Italian Patent and Trademark Office (UIBM), presented to protect new and inventive solutions in Italy and Europe.
From 1 June, after years of preparatory work, the new European Patent with unitary effect and the new Unified Patent Court (TUB), leading to a revolution in the field of intellectual property. In fact, the new European Patent with unitary effect will make it possible to obtain, with a single centralized procedure, uniform and extended patent protection in all EU Member States that have joined the new unitary patent protection system (without the need, therefore, to obtain validation in each country).
A possibility that will join the protection patent national and European already existing. In addition, the new Unified Patent Court will make it possible to activate and protect one’s patent title with a single procedure and thus obtain an effective decision in all the member countries of the Agreement. All this in order to make access to the patent protection system easier, economically less onerous and legally secure, guaranteeing faster decisions, as well as the uniformity of the law in all the member countries (avoiding conflicting decisions), thus favoring the legal certainty and consequently investment certainty.
This is obviously a crucial issue for the entrepreneurs hey professionals of the patent sector, a topic that was addressed yesterday on the occasion of the conference organized by the Portolano Cavallo law firm and the Modiano & Partners intellectual property consultancy firm, thanks to the interventions of various internationally renowned experts in the patent field.
During the conference, numerous emerged food for thought: undoubtedly this new patent system is an ambitious project, with the creation of a Court with substantive and procedural rules that have their roots in the legal traditions of the member states of the Agreement on the Unified Patent Court. At the same time, this Tribunal aspires to create its own doctrine and jurisprudence, autonomous and distinct from that of the States signatories to the Agreement.
All this with a view to creating a court that makes money decisions quickly (about one year), in which the parties will be called upon to present all their arguments from the very first stages of the procedure, and which will judge in compliance with the principles of proportionality, flexibility and fairness, guaranteeing high quality standards both on a legal and technical level (thanks to the relevant novelty constituted by the presence, alongside the professional judges, also of technical judges).
Another topic discussed and on which i holders of the patents are now called upon to assume wise and strategic decisions is the possibility of exercising the right to “opt-out”, i.e. the possibility of keeping one’s already granted European patents out of the unitary system and therefore from the jurisdiction of the Unified Patent Court. As underlined during the conference, the pros and cons of the “opt-out” must be carefully evaluated and there are certainly many factors to take into consideration, including the dynamics of the specific reference market, the strategies of competitors on these issues , as well as the budget actually allocated for the protection of its patent rights.
Italy is home to one Local Division of the new Unified Patent Court. She is also currently the favorite candidate to host, alongside Paris and Munich, the Third Section of the Central Division instead of London, following Brexit. In recent weeks, you have been awaiting a decision on this aspect, hoping that it will be positive. The main purpose of creating this new patent system is to increase cooperation between Member States of the European Union in the field of patents, significantly reinforcing the development of an internal market within the EU characterized by uniform rights and the development of a unitary system to ensure that competition in the internal market is not subject to distortions. In addition to the system effects that the unitary patent and the Court will have in the European panorama, this new procedure will determine significant advantages for business.
“First of all, the owners of patents with unitary effect and of European patents for which the opt-out will not be exercised will be able to apply to the new Court to obtain, with a single procedure, effective decisions in all the States signatories to the Agreement. In this sense, the Unified Patent Court will guarantee fast and high-quality decisions, preserving a fair balance between the interests of right holders and other parties involved in the proceedings. Furthermore, the presence of technical judges alongside professional judges guarantees in-depth decisions from both a technical and legal point of view. Even the costs and expenses to be incurred to bring a case before the new Court, although higher than in a case in Italy, will instead be lower than those to be incurred if it were necessary to take action before more than one national court. Furthermore, the victorious party will be able to obtain reimbursement of almost all the costs incurred in the process, with the only limit of a ceiling for legal costs, established on the basis of the value of the case ”, he comments Mary Crossbowman by Portolano Cavallo.
“There is no doubt that from 1st June the strategic importance of patent litigation for Italian companies is destined to increase – continues Lydia Mendola of Portolano Cavallo – In this sense, European patents already granted will also be subject to competence of the new Court unless a request is made to opt-out from the unitary system, which can in any case be revoked only once and provided that the conditions for doing so are met. It is therefore essential that companies make informed choices, adopting a strategic approach, making use the consultancy of integrated teams, made up of lawyers and patent attorneys, to adopt the most effective strategy both from a cost and future point of view enforcement.”
To the conference attended by Lydia Mendola, partner of Portolano Cavallo, Maria Balestriero, of counsel of Portolano Cavallo; Micaela Modiano, partner of Modiano & Partners; Alessandro Sanchini, patent attorney of Modiano & Partners, recently appointed Technical Judge of the Unified Patent Court; Willem Hoyng, Chairman of the Consultative Committee of the Unified Patent Court, member of the commission that drafted the Rules of Proceedings of the new Court, as well as professor of Intellectual Property Law at the University of Tilburg; Marina Tavassi, member of the commission that drew up the Rules of Proceedings of the new Court, previously President of the Court of Appeal of Milan as well as of the Specialized Section on Business of the Court of Milan; Sabine Agé, partner of the French firm Hoyng Rokh Monegier.
(Photo: Cristof Echard – © European Union)