The Italian Patent and Trademark Office have confirmed that, as of 1 July 2020, PCT applicants may enter the national phase in Italy directly. This marks a change from the previous regime, which required applicants to first enter the European regional phase in order to obtain a granted European patent, which could subsequently be validated in Italy.
This new possibility of obtaining an Italian patent directly from a PCT application may be valuable to applicants who wish to avoid the consequences of the (possible) future Unified Patent Court Agreement – wherein a granted European patent with unitary effect could be challenged centrally at the Unified Patent Court.
This new provision applies only to PCT applications that are filed on or after 1 July 2020, and so for any PCT applications that predate this, protection in Italy must still be obtained via the regional (EPO) route.
For most Contracting States of the European Patent Convention, it is already possible to obtain protection via either the national route or the regional (EPO) route. However, for the following countries, protection is still only available by the regional (EPO) route:
Belgium, Cyprus, France, Greece, Ireland, Latvia, Lithuania, Malta, Monaco, Netherlands, San Marino, Slovenia
The same is true for various countries that are signed up to other regional patent programs – OAPI (African Intellectual Property Organisation) and ARIPO (African Regional Intellectual Property Organisation). Please get in touch with your usual contact at WP Thompson if you require further information on these regional programs.
Procedural details for entry into the Italian national phase
The deadline for entry into the Italian national phase from a PCT application has been set as 30 months from the earliest priority date of the application. In contrast, the deadline for entry to the European regional phase is 31 months and, therefore, if the national phase deadline is missed, it would still be possible to seek protection in Italy via the regional route.
Additionally, a direct Italian national phase application would require translation of the entire specification into Italian. This translation may be filed upon entry to the Italian national phase, or within two months of the date of entry. This is in contrast to the existing European regional phase requirements, in which translation into Italian would only be required when validating a European patent in Italy.
If the possibility of filing a national phase application in Italy is of interest, then please get in touch with your usual contact at WP Thompson, so that we can provide further information.