Italy ready to ratify the UPC Protocol on Privileges and Immunities


Law 4 December 2017, n. 201, which authorises Italy’s President to ratify the Protocol on Privileges and Immunities (PPI) of the Unified Patent Court, came into force on 24 December 2017, having been published in the Gazetta Ufficiale the previous day.  Italy was one of the original signatories of the PPI (on 29 June 2016) and, after it  has ratified, its instrument of ratification must be deposited with the General Secretariat of the EU Council.  A local division of the UPC will be in Milan, and the PPI will confer legal status on the Court and certain privileges and immunities on the Court, judges and its staff to ensure its proper functioning.  The PPI must be ratified by France, the UK, Luxembourg and Germany to enter into force; France is ready to ratify (see here), the UK is expected to be ready in February (see here), in Luxembourg a bill is passing through parliament (see here), and the German parliament has passed a draft law (see here) with promulgation on hold due to the case pending in the German Federal Constitutional Court.

Italy’s legislative preparations for the unitary patent and UPC system are therefore now almost complete.  In February 2017 it ratified the UPC Agreement and signed the Agreement’s Protocol on Provisional Application.  Regarding amendments to national legislation, Law 3 November 2016, n. 214 (which came into force on 25 November 2016, see here) excludes UPC disputes from the competence of its IP specialised courts and included (in the Industrial Property Code) provisions on indirect patent infringement, and pursuant to Law 25 October 2017, n. 163  (which came into force on 21 November 2017) further amendments to the Industrial Property Code will be made by a Legislative Decree.  These will be relatively minor changes, mainly to include provisions relating to the introduction of the unitary patent.  These provisions will prohibit ‘double-patenting’ i.e. protection of the same invention by an Italian national patent and a unitary patent; the possibility of such ‘double protection’ had been discussed but decided against (whereas for the position in Germany, see Double protection and forum shopping under Germany’s draft UPC legislation).

Gregory Bacon


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