National measures relating to the Unitary Patent, I. General, Italy

I. General

Participating Member State

Validation/Extension states

Participating Member State	Italy
1Is there any measure accompanying the implementation of the Unitary Patent	Yes
2National measure	The Ratification Bill of the Agreement on a Unified Patent Court was published in the Italian Official Journal on November 24th 2016 and entered into force on November 25th 2016 (LEGGE 3 novembre 2016, n. 214 Ratifica ed esecuzione dell'Accordo su un tribunale unificato dei brevetti, con Allegati, fatto a Bruxelles il 19 febbraio 2013). For the full text of the Ratification Bill in Italian see: https://www.gazzettaufficiale.it/atto/serie_generale/caricaDettaglioAtto/originario?atto.dataPubblicazioneGazzetta=2016-11-24&atto.codiceRedazionale=16G00227&elenco30giorni=false The ratification procedure of the UPCA was completed on February 10, 2017 with the notification of the Ratification Bill to the European Council. UPC ratification details are available on the European Council's website: http://www.consilium.europa.eu/en/documents-publications/agreementsconventions/agreement/?aid=2013001 The UPCA Ratification Bill includes amendments to the national legislation to implement the Agreement, including the introduction into the Italian Industrial Property Law (Codice della Proprietà Industriale, decreto legislativo n. 30/2005) of provisions on indirect patent infringement. In the past, indirect infringement was only acknowledged by the national case law. Italy signed the Protocol on Provisional Application of the UPCA in Brussels on February 20th 2017 at the margin of the EU Competitiveness Council. No further ratification is needed for its application. The Ratification Bill of the Protocol on Immunities and Privileges (PPI) of the UPCA was published in the Italian Official Journal on December 23rd 2017 (LEGGE 4 dicembre 2017 n. 201 Ratifica ed esecuzione del Protocollo sui privilegi e le immunita' del tribunale unificato dei brevetti, fatto a Bruxelles il 29 giugno 2016) and entered into force on December 24th 2017. For the full text of the Ratification Bill of the PPI in Italian see: https://www.gazzettaufficiale.it/eli/id/2017/12/23/17G00209/sg The Ratification procedure of the PPI was completed on April 20th 2018 with the notification of the Ratification Bill to the European Council. The set-up of a local division of the UPC in Milan (address: Via San Barnaba 50, 20122, Milan) will require a separate legal instrument, considering that a Headquarter Agreement between the Italian Republic and the UPC is needed in this regard and it can be signed only after the start of the provisional application period. Details concerning the venue of the Milan local division were officially communicated from the Italian representative to the Preparatory Committee on October 10th 2016. A technical workshop of the UPC was hosted by the Italian authorities in Milan on April 4th 2019 and included an official visit to the premises of the future UPC local division. For information and pictures on the Milan local division see: https://www.unified-patent-court.org/locations With a view to the introduction of the Unitary Patent, amendments to the Italian Industrial Property Law (Decreto legislativo n. 30/2005, Codice della Proprietà industriale) were introduced by the Legislative Decree n. 18 of 19th February 2019 [Legislative Decree no. 18 of 19 February 2019, to adapt national legislation to the provisions on European patent with unitary effect, in particular the Unitary Patent Regulation (Regulation (EU) no. 1257/2012) and the Agreement on a Unified Patent Court (UPC Agreement) ratified by Italy with Law no. 214 of 3 November 2016 (so called "Unitary Patent Package")]. The Legislative Decree entered into force on March 27th 2019. For the text see the Italian Official Journal of March 12th 2019: http://www.gazzettaufficiale.it/atto/serie_generale/caricaDettaglioAtto/originario;jsessionid= k6M-flfHCtotwLaSPTTk3Q__.ntc-as3-guri2b?atto.dataPubblicazioneGazzetta=2019-03- 12&atto.codiceRedazionale=19G00024&elenco30giorni=false The amendments to the Italian Industrial Property Law (art. 56, 58, 59, 68, 70, 163, 245 bis) provided for by the Legislative Decree n. 18 are described as follows: Application of art. 25-26 and 27 of the UPCA to both European patents and unitary patents in Italy; Introduction of a "safety net" mechanism in case the unitary effect is rejected or revoked or withdrawn, to allow the patent owner to benefit from a 3 month period to validate his European patent at a national level; No simultaneous protection is allowed for an invention covered by a European patent with unitary effect and a national patent; Clarifications about applicable law at national level in case of national jurisdiction during the transitional period (according to art 83 UPCA). The full text of the Italian Industrial Property Law (Codice della proprietà industriale) is available in Italian at: https://www.normattiva.it/uri-res/N2Ls?urn:nir:stato:decreto.legislativo:2005-02-10;30

Participating Member State

Italy

Yes

The Ratification Bill of the Agreement on a Unified Patent Court was published in the Italian Official Journal on November 24th 2016 and entered into force on November 25th 2016 (LEGGE 3 novembre 2016, n. 214 Ratifica ed esecuzione dell'Accordo su un tribunale unificato dei brevetti, con Allegati, fatto a Bruxelles il 19 febbraio 2013).

For the full text of the Ratification Bill in Italian see:

https://www.gazzettaufficiale.it/atto/serie_generale/caricaDettaglioAtto/originario?atto.dataPubblicazioneGazzetta=2016-11-24&atto.codiceRedazionale=16G00227&elenco30giorni=false

The ratification procedure of the UPCA was completed on February 10, 2017 with the notification of the Ratification Bill to the European Council.

UPC ratification details are available on the European Council's website:

http://www.consilium.europa.eu/en/documents-publications/agreementsconventions/agreement/?aid=2013001

The UPCA Ratification Bill includes amendments to the national legislation to implement the Agreement, including the introduction into the Italian Industrial Property Law (Codice della Proprietà Industriale, decreto legislativo n. 30/2005) of provisions on indirect patent infringement. In the past, indirect infringement was only acknowledged by the national case law.

Italy signed the Protocol on Provisional Application of the UPCA in Brussels on February 20th 2017 at the margin of the EU Competitiveness Council. No further ratification is needed for its application.

The Ratification Bill of the Protocol on Immunities and Privileges (PPI) of the UPCA was published in the Italian Official Journal on December 23rd 2017 (LEGGE 4 dicembre 2017 n. 201 Ratifica ed esecuzione del Protocollo sui privilegi e le immunita' del tribunale unificato dei brevetti, fatto a Bruxelles il 29 giugno 2016) and entered into force on December 24th 2017.

For the full text of the Ratification Bill of the PPI in Italian see:

https://www.gazzettaufficiale.it/eli/id/2017/12/23/17G00209/sg

The Ratification procedure of the PPI was completed on April 20th 2018 with the notification of the Ratification Bill to the European Council.

The set-up of a local division of the UPC in Milan (address: Via San Barnaba 50, 20122, Milan) will require a separate legal instrument, considering that a Headquarter Agreement between the Italian Republic and the UPC is needed in this regard and it can be signed only after the start of the provisional application period. Details concerning the venue of the Milan local division were officially communicated from the Italian representative to the Preparatory Committee on October 10th 2016. A technical workshop of the UPC was hosted by the Italian authorities in Milan on April 4th 2019 and included an official visit to the premises of the future UPC local division.

For information and pictures on the Milan local division see:

https://www.unified-patent-court.org/locations

With a view to the introduction of the Unitary Patent, amendments to the Italian Industrial Property Law (Decreto legislativo n. 30/2005, Codice della Proprietà industriale) were introduced by the Legislative Decree n. 18 of 19th February 2019 [Legislative Decree no. 18 of 19 February 2019, to adapt national legislation to the provisions on European patent with unitary effect, in particular the Unitary Patent Regulation (Regulation (EU) no. 1257/2012) and the Agreement on a Unified Patent Court (UPC Agreement) ratified by Italy with Law no. 214 of 3 November 2016 (so called "Unitary Patent Package")]. The Legislative Decree entered into force on March 27th 2019.

For the text see the Italian Official Journal of March 12th 2019:

http://www.gazzettaufficiale.it/atto/serie_generale/caricaDettaglioAtto/originario;jsessionid= k6M-flfHCtotwLaSPTTk3Q__.ntc-as3-guri2b?atto.dataPubblicazioneGazzetta=2019-03- 12&atto.codiceRedazionale=19G00024&elenco30giorni=false

The amendments to the Italian Industrial Property Law (art. 56, 58, 59, 68, 70, 163, 245 bis) provided for by the Legislative Decree n. 18 are described as follows:

Application of art. 25-26 and 27 of the UPCA to both European patents and unitary patents in Italy;
Introduction of a "safety net" mechanism in case the unitary effect is rejected or revoked or withdrawn, to allow the patent owner to benefit from a 3 month period to validate his European patent at a national level;
No simultaneous protection is allowed for an invention covered by a European patent with unitary effect and a national patent;
Clarifications about applicable law at national level in case of national jurisdiction during the transitional period (according to art 83 UPCA).

The full text of the Italian Industrial Property Law (Codice della proprietà industriale) is available in Italian at:

https://www.normattiva.it/uri-res/N2Ls?urn:nir:stato:decreto.legislativo:2005-02-10;30

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National measures relating to the Unitary Patent, I. General, Italy

I. General