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Italian lawyers fear French UPC ‘landgrab’

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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.

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