ITALY RATIFIES THE AGREEMENT ON THE UNIFIED PATENT COURT
On 10 February 2017 Italy ratified the agreement on the Unified Patent Court (UPC) thus becoming the twelfth Member States to ratify the agreement introducing a new system for European Patents. As of now he Agreement has already been ratified by Austria, Belgium, Bulgaria, Denmark, France, Luxembourg, the Netherlands, Portugal, Sweden and Finland. In order for the Court to become operational it is necessary that the agreement be ratified by thirteen States, including France, Germany and the United Kingdom. While ratification by France has already occurred and that of Germany appears to be a mere formality, the relations between the United Kingdom and the new Court will be more complex as a result of the Brexit vote.
With law no. 214 of 3 November 2016, conferring authorization on the Italian President Mr. Mattarella to ratify the agreement, new substantive measures have been introduced in our patent system, which concern the very core of patent protection and especially protection against so-called “indirect infringements”: the new 2bis paragraph of art. 66 of Legislative Decree no. 30/2005 now expressly recognises that the patent owner has the right to “prevent third parties … from supplying or offering to parties who lack the right of utilization of the patented invention the means connected to an essential element of that invention which is deemed necessary for its implementation within the territory of a State where the invention is protected, if the third party is aware of the suitability and destination of said means or should be aware whilst exercising ordinary diligence”.
It must be emphasised that indirect infringement does not necessarily require positive knowledge of the destination whereas it is enough that the third party “should have it whilst exercising ordinary diligence”. There is no indirect infringement “when the means are formed by products that are currently on the market, unless the third party does not induce the party to whom the means are supplied into committing” an infringement of the patent (as defined by the norm under consideration).
It must be noted that the provision makes no distinction between national and European patents, so that the above described principles will apply for both categories and the alterations of the substantive law will also apply to national patents.
Last month, the Justice Minister Mr. Andrea Orlando had identified a building in via San Barnaba 50 in Milan as the local headquarters of the Unified Patent Court. With the agreement now ratified, a further important step was taken towards a new patent system.