Eighth-largest economy in the world opens national phase route from PCT

When I was first in patent practice, the only way to pursue patent protection in Italy from a PCT application was to enter the European regional phase.  There simply was no national-only route to Italy from the PCT.  

And so things have remained for years and years, until July 1, 2020.  On July 1, 2020 Italy, the eighth-largest economy in the world when ranked by gross domestic product, opened a national-phase route from PCT.

You can read all about this in the Italian National Chapter Annex in the PCT Applicant’s Guide.

It is interesting to think about fact patterns that might prompt a filer to make use of this filing path.  Clearly one fact pattern that might call for this filing path is if the applicant particularly needs protection in Italy, more than in any other country that belongs to the EPO.  Instead of spending all of the money that has to be spent for entering the regional phase in EPO, the filer might only need to spend the money for a national-phase entry in Italy.

Another fact pattern conceivably calling for an Italian national-phase entry might be if an applicant is particularly interested in obtaining utility model protection in Italy.  Italy has utility model protection as one of its available protection mechanisms, while EPO does not.  

Here are some of the most important things to know about Italian national-phase entry from the PCT:

  • Italy is a 30-month Office for purposes of national-phase entry.
  • You need to provide a translation of the PCT application into Italian as part of the national-phase entry process.
  • For purposes of national-phase entry, DO/EO/IT recognizes Restoration of the Right of Priority, but only under the “due care” standard.

I have to imagine that this recent development must be very popular with patent firms in Italy, since it represents an opportunity to earn a professional fee carrying out a task which previously was not possible to carry out.  Indeed I clicked around on the Internet and found many a patent firm in Italy that has posted an article on its web site letting readers know that the firm stands ready to attend to such an Italian national-phase filing.

Have you carried out such an Italian national-phase entry from a PCT?  Do you plan to do so?  If so, what circumstance is prompting such a plan?  Please post a comment below.

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