‘We are ready’: Italian judge on taking UK’s UPC seat

Let the jostling begin: a new central seat for the proposed Unified Patent Court is up for grabs.

Pierluigi Perrotti, a judge at the IP Division of the Court of Milan, believes Italy has a good claim to take the spot.

He knows this is not a simple matter and is quick to stress that this is primarily a political question.

“This [deciding on and lobbying for a new location] is for the politicians,” he tells Managing IP. “But, we have a local division which is ready and if we are asked to host a central division we are also ready.”

After previously only signalling that it would, the UK announced last week that it had withdrawn its ratification of the UPC Agreement (UPCA) with immediate effect.

The ramifications of this – specifically for the overall UPCA – have yet to be unpicked.

But what is certain is that even if the unitary patent and the UPC are to materialise, the life sciences London-based central division seat (the other two seats are in Munich and Paris) will move elsewhere. The location of London, as well as of Paris and Munich, is written into the agreement as it stands so this will need to be changed.

Italy and the Netherlands are probably the most frequently mentioned options for a new location. Some lawyers have also suggested that it could be shared between Paris and Munich.

Perrotti believes Italy is well placed.

“The official presentation of a local UPC division [in Milan] took place in April 2019 and was widely appreciated.

“We have large and efficient spaces available to us. Of course, as an Italian, I would be glad if we were told this [that a UPC central division will be hosted in Italy].”

What about Italy’s competitors, we ask, specifically the Netherlands.      

“Germany, the UK and France have the largest number of European patents. After that, it’s Italy. If we follow the numbers, the solution is ready. But it’s not only a question of numbers,” Perrotti says.

According to the UPCA, the three countries with the most European patents ‘in effect’ at the time the agreement was drawn up, in 2012, must ratify it before it can come into being. A source close to the matter say that this should be determined by calculating the number of valid European patents each country had in force up to and including 2012.

While Germany, France and the UK were supposed to host the court’s central divisions, the UPCA’s section on the divisions does not specify the patents in effect notion. This means that different criteria could be applied to establish which country will take the UK’s seat, the source adds.

Italian politicians have already indicated their support for Italy’s case. The country has improved its reputation as a place to litigate after the implementation of specialised IP courts in 2003, sources say.

The UPC is in a state of flux and, as has been the case for many months, conversation inevitably turns to speculation. We move on.

The Milan court and the other regional divisions, in Rome and Turin, heard only IP cases until 2012. Then, the courts’ remit was expanded so that they could also hear matters including competition and company law.

However, despite this, Perrotti’s preference has remained the same.

“My preference is patent litigation,” he says, his passion clear to see as he adopts a philosophical tone: “A patent is a ‘little universe’. Each case has its own story and brings a unique challenge that you have to delve into to fully understand.

“Each patent has its own language, its own future, and every case is quite different from the other. In any case, you touch on the complexities of intangibles. If you imagine a pyramid, the patent is on the top, and underneath you have all these other complex issues to unpick: the company or organisation, the workers, the managers and investments.”

With such complexities at stake, and even enormous financial repercussions, it’s fortunate that judges can call on experts to aid their understanding, Perrotti says.

In Italian cases, there are two types of expert: a judge-appointed technical expert called a consulente tecnico d’ufficio (CTU), and another expert normally appointed by the parties in any given case.

The CTU is an assistant of the judge and provides their written opinion on a patent’s validity or infringement at the judge’s request. They cannot refuse to give a report, and must be neutral and impartial.

Their names are chosen from a database of academics or scientists that is administered by the courts. Typically, one expert per case is called upon, but in the most difficult cases a group of three experts can be appointed.

“The experts give great support,” says Perrotti. “In Italian courts we do not have technical judges. We are professional, but not technical. The expert gives us comprehension.”

The expert’s reports are not binding or considered proper evidence but are intended to provide judges with technical information.

“I don’t have an official statistic for how many times we have followed the advice of the expert or not. [But] in about 80% of cases we would follow the expert opinion,” Perrotti says.

Mainly, experts are used in patent cases, says Perrotti. Their use in trademark disputes is less common but on occasion an economist’s advice may be considered in order to quantify damages.

As remote working has become the norm globally, digital hearings have become commonplace, and we ask Perrotti whether he will be embracing the digital world.

“Generally, remote hearings have worked quite well. However, I find them to be less fluid than in-person hearings, and the feeling is quite different. You have to follow a rigid order.”

He adds: “I do prefer public hearings. When people are in your presence you can completely understand and solve the problems of each situation. That said, something is better than nothing.”

Italy was one of the first countries in Europe to face a major wave of COVID-19 cases. In February, the government implemented emergency measures and suspended all court hearings, bar a few emergency cases.

For everything else, permission to either suspend a case or hold remote hearings was granted. Initially, the measures were in place until the end of June but this has now been extended to the end of October.

Perrotti says he believes the courts will return to holding mainly in-person hearings by the end of October. Any further extension will be down to the government, he adds.

What of the future beyond the pandemic? Perrotti’s, it seems, remains very much on the bench.

Asked if there was anything about a judge’s role that came as a surprise, he laughs. “I am the son of two judges, so I was well prepared.”

His father was a judge in the criminal courts, his mother an IP judge. “They were a very positive influence, so it was easy to follow their example,” he adds.

“Day by day I realise that I am very lucky to do the work I love.”

Will we see a third generation follow suit, we ask.

“I have a daughter, but I don’t know yet if she will love my work. We will have to see.”