Italian SPCs

Our attention was drawn this week to an article in the June 2008 issue of EPI Information, the journal of the Institute of Professional Representatives before the European Patent Office.

In this issue, F. de Benedetti of Italy reports the passing of a bill in the Italian Parliament which clarifies the calculation of the six month annual reduction of the term of SPCs applied for in Italy before 2 January 1993.

Prior to the harmonization of SPC regulations in Europe by Council Regulation 1768/92, Italy enacted its own SPC scheme: the duration of the certificate was equal to the period between filing the patent application and the date of first marketing authorization in Italy as long as this term did not exceed 18 years after the end of the lawful term of the patent. Moreover, this term was to begin on the date of marketing authorization. This patentee friendly scheme was changed in 2002 when a new law was enacted that provided for an annual six month reduction to the term of these pre-1992 SPCs. It however remained unclear how to calculate the term reduction when the remaining term was less than one year.

On 23 February 2008 the Italian Parliament passed a bill containing a provision to clarify calculation of this term reduction. This provision calls for the reduction to be applied to the last year. For example, should the last year's remaining term be less than 6 months, the SPC would expire on 31 December of the previous year. Should the remaining term be more than 6 months, then it will be reduced by 6 months.

According to Mr. de Benedetti, although this provision clarifies an important point of law, there are other points which still remain unclear:

A small number of said SPCs were not yet in force in 2004, when the system
reducing the term by 6 months for each calendar year started to be
applied. It remains to be seen for these cases, whether the subtraction of
6 months should count in any case from the year 2004 or from the year when, upon
the patents expiry, the SPC entered into force.

The SPC blog would be interested in getting a rough estimate of how many SPCs with abnormally long terms are still lurking around in Italy…