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Milan challenges London for its Unified Patent Court location


6th Oct 2016

London and Milan have a long history of being rival cities in the world of fashion and design. The Italian professional institute for patent attorneys has now lobbied for Milan to take the place of London as the location of one of the sections of the central division of the Unified Patent Court.

As we previously reported the concept behind the long awaited Unitary Patent system is to provide a single validation of a European patent to give a single right covering all participating European Union (EU) countries. The Unified Patent Court (UPC) is intended to be a single court which has jurisdiction for all Unitary Patent matters and for conventional national validations of European patents in participating EU countries. In other words, the UPC would replace the current national courts that have jurisdiction only for one country.

Under the UPC Agreement, the UPC’s central division is to have its seat in Paris with sections in London and Munich. Such a setup in theory would allow the cases to be distributed among the three locations according to the patent’s subject matter. More specifically, The Court of First Instance would have a central division with its seat in Paris and thematic sections in London (focusing on chemistry cases, including pharmaceuticals, i.e. International Patent Classification (IPC) classification C, and human necessities, i.e. IPC classification A) and Munich (mechanical engineering cases, i.e. IPC classification F).

London’s court division will be dedicated to disputes in pharmaceuticals and life sciences, a sector in which the UK is seen as a world leader. However, in August, L’Ordine dei Consulenti in Proprietà Industriale (the professional body) published a letter from its President to Italy’s Prime Minister and others urging them to bid for Milan to replace London as the location of a section of the central division of the UPC, in the wake of the UK’s Brexit referendum.

The letter argues that the section of the central division should be in Italy rather than in London because Italy is the fourth EU state (after France, Germany and the UK) in which the highest number of European patents had effect in 2012. The reasoning is that it should, therefore, under the UPC Agreement, by default replace the UK as one of the three mandatory ratifying countries. Another reason put forward is the fact that Italy is one of the main countries in the EU applying for not only European patents but also trade marks and designs, yet it currently does not host any EU IP institutions. Regarding the choice of Milan as the particular location in Italy, the letter goes on to explain that most of Italy’s IP applications are from companies or firms located in the Lombardy region, and that a prospective new Unified Patent Court would bring benefits such as employment growth and an enhanced reputation in innovation and creativity.

The UPC Agreement has not yet been ratified by Germany or the UK, although France and 10 other countries have signed it. Italy has also not yet ratified the UPC Agreement but a draft bill for ratification is currently passing through its parliament. The UPC Agreement requires ratification by a minimum of thirteen member states of the EU, which must include the three EU countries in which the highest number of European patents had effect in the previous year. While the UK remains a member of the EU (which it looks like being until at least 2019), the current Agreement therefore requires UK ratification. Many have discussed and speculated on the possible options available to the UK and the other UPC states in going forward from the UK’s referendum vote in favour of Brexit. However, if the UK does not ratify the UPC Agreement before it triggers Article 50 of the Lisbon Treaty, it is likely that the implementation of the UPC system will be delayed for some time to come.

Even though there may be no legal reasons preventing the UK from ratifying the Agreement now or at any time in the future while it remains a member of the EU, many now speculate that it is unlikely that the UK will ratify the Agreement (as it stands) for political reasons. It is worth reminding ourselves that Brexit will not affect the granting of patents under the EPC as there is no prospect of the UK leaving the EPC.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

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