The new Unitary Patent tool, introduced in June 2023, is witnessing increasing adoption. The EPO’s interactive dashboard containing UP statistics confirms the trend for the first year[1]: unitary effect requests in 2024 account for over 25% of new EP grants.

The adoption of the Unitary Patent is particularly notable in technology sectors, with medical technologies—an area where Italy has a significant presence—representing about 12% of requests in 2024. This highlights the importance of the system for businesses operating in the field. Conversely, the pharmaceutical sector, which led the rankings for opt-out requests from the jurisdiction of the new Unified Patent Court last year, places only ninth for unitary effect requests, confirming this sector’s cautious approach towards the UPC and greater confidence in national courts.

In Italy— which ratified the Agreement on the Unified Patent Court back in 2016, demonstrating an early commitment to this new system—interest and trust in the Unitary Patent seem to be growing, possibly following the establishment of the third central division of the UPC in Milan, which was initially intended to be based in London before Brexit.

The new tool is proving particularly advantageous for small and medium-sized enterprises (SMEs) and Italian start-ups, thanks to reduced costs associated with validation and translations compared to the traditional national validation procedure. As of now, Italy ranks among the top ten countries in Europe for unitary patent requests; this evolving data is also reflected in statistics related to language requirements, with Italian being the fourth most used language for the translation of Unitary Patents[2], after Spanish, English, and German. Although it does not rank among the top positions dominated by countries like Germany and France, it is nonetheless playing a significant role in the European patent landscape.

The adoption of the Unitary Patent in Italy is likely to continue growing, especially in industrial contexts where companies seek to protect their inventions with broad coverage at lower costs compared to single validations in multiple countries.

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[1] It should indeed be noted, when looking at the 2023 statistics, that the new tool was only available for grants made in the second half of the year.

[2] During the transitional period, where the language of proceedings is not English, a translation of the patent must be submitted in English; if the language of proceedings is English, the translation can be provided in any of the other official EU languages.

The European Patent Office (EPO) has introduced a new micro-entity regime with reduced fees for those who are eligible, starting from April 1, 2024.

The micro-entity regime applies to the applicants hereinafter defined, irrespective of their nationality or domicile, for the lifetime of a direct European application and/or a Euro PCT application: (a) microenterprises; (b) natural persons; (c) non-profit organisations, universities or public research organisations.

In case the patent has more than one applicant, each applicant must meet the requirements for micro-entity.

Furthermore, a “previous application filing limit” of no more than 5 applications in the past five years prior preceding, including the application that is receiving the fee reduction, is provided.

The patent application which fulfills the above requirements may enjoy a 30% fee reduction for fees such as filing fees, search fees, examination fees, designation fees, grant fees and renewal fees. Nevertheless, some fees, including extension fees for extension states, validation fees, excess claims or excess page fees, do not get fee reductions.

The meaning of microenterprises is based on the definition in the EU Commission Recommendation of 6 May 2003: an enterprise which employs fewer than 10 persons and whose annual turnover (the amount of money taken in a particular period) or balance sheet (a statement of a company’s assets and liabilities) does not exceed EUR 2 million.  Further conditions apply when the microenterprise involves partner enterprises and/or linked enterprises.

Due to BREXIT’s imminent effects on intellectual property, we would like to inform you that as of 1^st January 2021, not all the registered EU trademarks and Community designs will automatically enjoy protection in the UK. In particular, there will be a distinction between trademarks already registered before the end of the Brexit transition period (i.e. 31.12.2020) and trademarks still in application status on that date.

The former will automatically convert into a separate EU and UK trademark, starting from 1^st January 2021. The resulting UK trademark will have the same application date, priority and registration as the EU trademark from which it was generated.

On the other hand, ongoing applications will not benefit of this provision, but there will be a period of 9 months to submit a specific application in the UK to obtain the same protection, even if the data of the filing of the suspended EU application. An additional measure we recommend to all EU trade mark owners is to update the proprietary data of their file as needed, so that the UK trade mark creation is already done with the correct data. Any coexistence agreements and licensing rights concerning EU trade marks will continue to affect registrations in the UK. If they have been registered with the EUIPO, they have also been registered with the UKIPO. The same criterion applies to EU designations of international trademarks and the same applies to Community designs. It will therefore be important to monitor the progress of pending applications until 31.12.2020 to assess the appropriate actions to be taken to ensure the proper management of intellectual property assets in the United Kingdom. For any information needed as regards this matter, please contact us and we will be happy to assist you.

With the recent conversion of the “Cura Italia” decree into law, the validity of industrial property rights expiring during the current emergency period has been extended in Italy.

In the Official Gazette no. 110 of 29 April 2020 (S.O.n.16) it has been published  the conversion law (L.24 April 2020, n.27) of the decree law of 17 March 2020 n. 18 (“Cura Italia” decree), containing “Measures to strengthen the National Health Service and economic support for families, workers and businesses connected to the epidemiological emergency by COVID-19. Extension”.

In light of this change, the Italian Patent and Trademark Office, as far as our Country is concerned, has notified  that:

“All certificates, permits, concessions, obligations and enablings, however denominated, including those relating to industrial property titles, expiring between 31 January 2020 and 31 July 2020, retain their validity for the following ninety days after the declaration of cessation of the state of emergency. For industrial property titles, upon expiry of the period, the interested party who intends to extend the duration of a title, should take any proper action with the related payments, in the forms already established by the law, in order to achieve their maintenance or renewal ” .

The Italian Patent and Trademark Office will timely give information on the cessation of the state of emergency.

Our firm continues to be at complete disposal for all the necessary information and operations of the case.

On June 23, 2016, British people voted to leave the European Union (EU), the so-called “Brexit.”

What will happen now? This is the question!

For the time being, the European IP Rights landscape remains the same. No changes are likely to happen in the immediate future.

The UK Government has not decided which strategies will be adopted and the timing of the mechanism is also not yet known.

According to the Treaty of Lisbon, the UK is expected to be a member of the EU until mid-2018 at the earliest. At the moment, and until the actual leaving date is reached, all EU IP rights will apply equally to the all other EU member states.

A process of negotiation and adjustment of the system will start with multiple possibilities, including the United Kingdom to completely leave the European Union or to stay in the European Economic Area (“the Norwegian way”). Due to the many possible scenarios, it is important not to rush and be attentive to the next events.

Therefore do not make hasty decisions. Each holder of IP Rights will have different needs.

There is no one-size response that fits-all IP holders.

The law is changing but we will be able to keep you up to date with suggestions for your personal needs.

Should you have any further questions, please contact us.