July 29, 2020

Italy permits direct PCT national phase entry

July marked the introduction of the PCT direct national phase entry in Italy, which was enforced on July 1, 2020.

National legislation in certain member states of the European Patent Convention prevents applicants from obtaining patent protection through the PCT national phase entry directly, instead obliging applicants to enter the PCT national phase through the designation of the EPO. These countries include Belgium, Cyprus, France, Greece, Ireland, Latvia, Lithuania, the Netherlands, Malta, Monaco, Slovenia and San Marino. Italy was previously among the aforementioned countries, however, direct national phase entry has now become possible in Italy due to the implementation of the Growth Decree, which was enforced on June 30, 2019.

All PCT applications with an international filing date on or after July 1, 2020, will qualify not only for European regional phase, but also for national phase direct entry in Italy. A request must be sent to the Italian Patent and Trademark Office, with the complete text of the international application translated into Italian within 30 months from the date of priority. It is not possible to extend this 30-month term.

The introduction of the direct national phase in Italy offers applicants the ability to opt for the most effective way of obtaining protection in Europe or specific countries, such as Italy, based on their IP needs, financial scope and opportune timing. For instance, following the results of the international search and examination, the applicant may now consider entering the Italian national phase of a PCT application as a utility model instead of a patent application, which was previously impossible via the European route.

With increased opportunities put forth by the Italian Patent Office in relation to direct national phase comes an increase in possibilities for IP applicants. It is hoped that the change will encourage further PCT applicants to the national phase in Italy, contributing to an uplift in the IP field in the country.

Author: Danielle Carvey