Italy’s legislation for unitary patent and UPC system now complete


Following approval by the Italian government’s Council of Ministers last November, the Legislative Decree to adapt national legislation to the provisions of the Unitary Patent Regulation (EU 1257/2012) and the Unified Patent Court (UPC) Agreement has been published in the Gazetta Ufficiale  and comes into force on 27 March 2019. This Legislative Decree 19 February 2019, n. 18 amends the Industrial Property (IP) Code to introduce unitary patent protection and related provisions. It also amends the IP Code’s provisions on non-infringing acts to reflect those in the UPC Agreement; it introduces new exceptions to infringement (Articles 27(c), (f), (g), (h) and (k) of the UPC Agreement), such as the “plant breeders’ exemption”  (which permits limited use of patented biological material for the breeding or discovering and developing of other plant varieties) and the “interoperability exemption” (which permits certain acts in relation to computer programs). These amendments complete Italy’s legislative preparations for the unitary patent and UPC system.

Previously the IP Code was amended in 2016 (by Law 3 November 2016, n. 214) to include provisions on indirect infringement, which the UPC Agreement provides for, given that, although the Italian courts acknowledged indirect infringement through case law, there were previously no express statutory provisions. Law 3 November 2016, n. 214 also enabled other preparations for Italy to participate in the UPC system. It amended national legislation to exclude UPC disputes from the competence of Italy’s IP specialised courts, authorised the Minister of Economy and Finance to make budgetary changes for the UPC system, and authorised the President to ratify the UPC Agreement. Italy ratified the UPC Agreement and signed the Agreement’s Protocol on Provisional Application in February 2017, and ratified the UPC’s Protocol on Privileges and Immunities in April 2018. The Italian Ministry of Justice announced in 2016 that a local division of the UPC will be in Milan (in an existing court building at via San Barnaba 50).

Gregory Bacon


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