UPC: Milan confirmed as third seat but Munich lands chemistry, minus SEPs

UPC Administrative Committee 'voted unanimously' to approve Milan | Court will hear patent cases related to “pharmaceutical, phytosanitary, agri-food and fashion” | Chemistry and metallurgy moving to Munich, excluding SEPs | 23 cases currently before the court.

Milan has been confirmed as the third seat of the Unified Patent Court’s (UPC) central division during a meeting of the UPC Administrative Committee.

The court detailed the allocation of the seat, which was available after London pulled its participation from the court project following Brexit, in a statement on June 29.

Since opening on June 1, the court has received 23 cases, consisting of six protective measures (specifically, four applications for provisional measures; two applications to preserve evidence, three revocation actions and 14 infringement actions).

The court also received 236 protective letters. However these figures will be '"rapidly outdated" as more cases appear, the court said.

The decision was met with unanimous agreement, said Deputy Prime Minister and Foreign Minister Antonio Tajani on Twitter.

This latest development follows an announcement by the Italian government in May confirming that it had finally agreed with France and Germany to set up a branch of the central division of the UPC in Milan.

It said that the government had been undergoing the legal and operational procedures required for the seat to be established and operational within a year.

“The member states of the UPC have recognised the merits and objective reasons in support of Milan’s candidacy,” noted the release.

The city will join Paris and Munich as the hosts of the central division seats.

However, some of the seat’s competencies will split off, with chemistry and metallurgy minus supplementary protection certificates (SEPs) destined for Munich.

The Paris seat will take SEPs, added to its other competencies of performing operations, transporting, textiles, paper, fixed constructions, physics, and electricity.

This leaves the Milan seat with human necessities, without SEPs.

“It is a significant result for Italy,” said Tajani in a press release issued on Monday, June 26.

The statement described it as “a result that confirms the central role of Italy, Milan and Lombardy in the promotion and protection of innovation and intellectual property in Europe and in the world.

“The decision of the Administrative Committee successfully completes the long and complex diplomatic work carried out jointly by the Italian Government through the Ministry of Foreign Affairs, in close collaboration with the Ministry of Justice, the Ministry of Enterprise and Made in Italy and in agreement with the Lombardy Region and the Municipality of Milan,” the statement added.

Chemistry excluding SPCs to Munich?

The allocation of responsibilities among the central division seats is still uncertain.

According to Tajani, the Milan seat will judge patent disputes in “crucial sectors” for Europe and for Italy such as the pharmaceutical, phytosanitary, agri-food and fashion.

However, according to those close to the situation, the decision amends Annex II of the UPC Agreement, by moving ‘class C’ (chemistry and metallurgy) to Munich (with the exceptions of the relative supplementary protection certificates (SPCs)). The SPCs of classes A (human necessities) and C will move to Paris.

This leaves Milan with ‘class A’, with the exception of the relative SPCs.

IP strategy adviser at Bracco Spa, Francesco Macchetta, said he was confused by the alleged change.

“I am obviously happy for Milano being designated as a section of the UPC central division but I am puzzled by the decision to change the competencies originally foreseen in Annex II of the Treaty.

"I do not see anything in Art 87(2) UPCA to support it, as I do not see how one can argue that this change was needed because of bringing UPCA in line with international treaties relating to patents or union law.”

Italy reportedly aims to have the Milan section fully operational within 12 months, with a target date set before June 2024.

The UK’s membership in UPC was incompatible with its approach to its relations with the European Union following Brexit and the Intellectual Property Office confirmed its non-participation in the UPC system in April 2020.

The seat that was originally designated to London has since been subject to much debate and speculation.

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