Italian parliament flares up over proposed UPC relocation
The Italian government and IP experts have reacted angrily to a proposal that the London division of the Unified Patent Court (UPC) be shifted to Italy, yet cases involving chemical and pharma patents with supplementary protection certificates should be transferred to Munich and Paris,. This resistance highlights the somewhat tumultuous relationship that has existed between Italy and the UPC since its conception.
An uncertain beginning
Initially, Italy supported the notion of the UPC back in 2011, although it came out against the proposed unitary patent language regime. It is rumoured that, at that time, the central division of the UPC was offered to Italy in exchange for Italian participation in the unitary patent system and the withdrawal of an action filed with the European Court of Justice.
However, in June 2012, when this action was still pending, the central division was divided into three sections – based in Paris, London and Munich. It is worth noting that these cities are located in the three countries that had the power to veto the UPC Agreement’s entry into force under Article 89(1).
Eventually, Italy confirmed its participation in the unitary patent system in 2015. With the unitary patent now entering into force, Italy will become the most critical manufacturing country (second in Europe, seventh in the world) covered by a patent written entirely in a foreign language.
Brexit’s impact on Italy in 2023
The agreement was amended in 2016 as a result of Brexit, since London is explicitly mentioned in Article 7(2). According to an opinion of the European Parliament Committee on Legal Affairs, the relocation of the London section "would need an amendment of the UPCA by unanimous agreement of all other Contracting Member States". Even a temporary relocation to Paris and Munich would be unfeasible without unanimous confirmation.
Since Italy is one of the three countries needed for the UPC’s launch, at the start of this year it was proposed that the London section be relocated to Italy. However, according to this proposal, the Italian section – which would be based in Milan – would receive only a small portion of cases, as the chemical and pharma patent cases previously that were reserved to the London section would instead go to Munich and Paris, respectively.
This proposal has been strongly opposed during hearings at the Italian Parliament in March and April 2023. Some Italian IP experts also observed that any amendment of the agreement for this purpose would be "illegal", as it cannot be justified by the Brexit agreement under Article 87(2) of the UPC Agreement. It has even been suggested that Italy should use its veto power under Article 89(1) if the Milan section is not to obtain the same competence as the London section.
It is to be hoped that a legally sound and politically reasonable solution will soon be found, hopefully before the agreement enters into force.
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