Italian lawyers fear French UPC ‘landgrab’

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Italian lawyers fear French UPC ‘landgrab’

Europe viewed from space at night with city lights in European Union member states, global EU business and finance, satellite communication technology, 3D render of planet Earth, world map from NASA

Milan may only fulfil its UPC dream at a price, with a decision from negotiations between France and Germany expected shortly

Italian lawyers fear Milan’s potential Unified Patent Court central division will miss out on key pharmaceutical cases if talks with France and Germany result in some life sciences cases being heard in Paris.

A spokesperson for Germany’s Ministry of Justice (MoJ) confirmed to Managing IP yesterday, March 13, that trilateral discussions with Italy and fellow UPC central division host France were ongoing and that a decision is expected “shortly”.

Milan is the only contender to host the third central division seat, which was originally assigned to London before the UK quit the UPC project in 2020.

The London division was expected to specialise in life sciences cases.

The other two central seats are in Paris and Munich.

Italy bid for Milan to replace London on the basis that its division would assume responsibility for life sciences cases.

However, a report in the Italian newspaper Il Sole 24 Ore last month said that the original allocation of cases to the different central divisions was under debate.

France and Germany have, according to that report, proposed that the Paris division should hear cases involving pharmaceutical patents for which a supplementary protection certificate (SPC) is in effect.

That would leave the proposed Milan division with non-SPC pharma cases, a prospect that has alarmed some Italian practitioners who campaigned for Milan to host the seat.

Laura Orlando, joint global head of IP at Herbert Smith Freehills in Milan, said the rumoured proposal appeared to be a “landgrab” with no legal basis.

She added that a split between SPC and non-SPC cases would be entirely arbitrary and impractical from an enforcement perspective.

“This new debate on the competence of the third central division appears to stem from purely political considerations, which worryingly do not take into account the technical and legal context,” Orlando told Managing IP.

But while the Italian legal sector has reacted mostly negatively to the proposal, some practitioners think a compromise might be worthwhile.

Roberto Valenti, partner at DLA Piper in Milan, said a compromise on SPC cases would be worth it if the Milan division could start hearing cases from when the UPC opens in June.

“The third central division is extremely important, not only for Italy but for the system as a whole.

“I hope parties agree on a solution now rather than later,” Valenti said.

A spokesperson for Germany’s MoJ said the establishment of a central division in Milan would require an amendment to the UPC Agreement (UPCA), which still references London.

Munich and Paris will temporarily assume all central division responsibilities if no deal to amend the UPCA has been reached by the time the court opens on June 1, she added.

more from across site and SHARED ros bottom lb

More from across our site

The renowned food brands were represented by a host of lawyers, including members of the firms’ IP teams
Partners at Bird & Bird and Taylor Wessing discuss how Saudi Arabia offers unique opportunities for firms dealing in IP and tech
Attorneys explain why there are early signs that the US Supreme Court could rule in favour of ISP Cox in a copyright dispute
A swathe of UPC-related hires suggests firms are taking the forum seriously, as questions over the transitional stage begin
A win for Nintendo in China and King & Spalding hiring a prominent patent litigator were also among the top talking points
Rebecca Newman at Addleshaw Goddard, who live-reported on the seminal dispute, unpicks the trials and tribulations of the case and considers its impact
Attorneys predict how Lululemon’s trade dress and design patent suit against Costco could play out
Lawyers at Linklaters analyse some of the key UPC trends so far, and look ahead to life beyond the transition period
David Rodrigues, who previously worked at an IP boutique, said he may become more involved in transactional work at his new firm
Indian smartphone maker Lava must pay $2.3 million as a security deposit for past sales, as its dispute with Dolby over audio coding SEPs plays out
Gift this article