UPC Administrative Committee approves Milan for third central division

According to a press release from the Italian Ministry of Foreign Affairs, today’s UPC Administrative Committee meeting has concluded with a unanimous decision to allow Milan to host the third seat of the UPC’s central division. As noted in the UPC’s ‘Communication on Administrative Committee meeting’ of 2 June 2023, “Italy, France and Germany presented the outcome of their trilateral discussions regarding a permanent solution on Article 7 (2) UPCA and Annex II of the Agreement in which the reference to London has become obsolete after Brexit.” The UPC website notes that the decision was expected today.

Now, it seems, the news is official. This is a boon to Italy and its patent lawyers, which have long lobbied for the Lombardy capital and important metropolis to host the division formerly belonging to London.

In the top three

Italy’s deputy prime minister and minister of foreign affairs, Antonio Tajani, says, “This is a significant result for Italy. It is an absolutely unexpected result that confirms the central role played by Italy, Lombardy and Milan in the promotion and protection of innovation and intellectual property in Europe and worldwide.”

In May of this year, JUVE Patent reported that Milan was confirmed as the third and final seat for the UPC central division. According to a statement released late yesterday by the Ministry of Foreign Affairs and International Cooperation, the Italian Ministries of Foreign Affairs and Justice negotiated the agreement with representatives from France and Germany. The ministries then submitted this to the other UPC contracting states during the next meeting of the Administrative Committee, in order to secure formalisation.

However, an amendment to the current UPC treaty is required before Milan can officially take over the role. The contracting member states must decide jointly on an amendment to the Agreement on a Unified Patent Court (UPCA). Now, with approval of the Administrative Committee, this next step can go ahead.

Under the timeframe laid out in UPCA Article 87.3, the Italian government hopes to have the third central division location up and running within the year. A JUVE Patent source has confirmed that the decision is final, so long as no UPC state raises an objection within a year. Thus, barring an intervention, the Milan third section will likely open its doors before the end of June 2024.

Competencies unconfirmed

For the months prior to the Administrative Committee’s approval, speculation has abound regarding whether the IPC classes the UPCA had previously assigned to London would automatically be transferred. Many experts had expected a simple handing over to be the case. However, on 16 May the UPC Presidium assigned pending actions related to patents in IPC section (A) – human necessities – to Paris, while it assigned actions related to patents in IPC section (C) – chemistry, metallurgy – to Munich.

In a previous LinkedIn post from Mattia Dalla Costa, president of LESI Italy, he speculated that Milan has retained competencies for medical/veterinary sciences and hygiene, pharmaceutical patents without SPCs, non-pharma biotechnology, agriculture, food, tobacco, personal and household goods, and sport and entertainment.

Then, in the UPC Administrative Committee meeting on 2 June, Italy, France and Germany proposed a solution regarding the allocation of competencies originally intended for the London central division. According to the UPC website, the countries propose that a central division in Milan be competent for IPC section A patents (human necessities), the Munich division be competent for IPC section C patents (chemistry, metallurgy) and the Paris division for SPCs from section A and C patents.

Future looks bright

Member states were due to make a final decision during today’s meeting, on 26 June. In the latest press release, the Italian government notes that “the Milan Section will judge patent litigation in crucial sectors for Europe and Italy such as pharmaceuticals, plant protection, agri-food and fashion.” However, JUVE Patent cannot confirm this, and the UPC website has not yet published its decision.

The draft decision presented at the Administrative Committee meeting on 2 June also “foresees a review to be launched in 2026 in advance of the general review foreseen under Article 87 (1) of the UPC Agreement.” Thus, with Milan expected to be fully up-and-running as a central division in one year, a review will take place on the approach to amendments to Article 7 (2) and Annex II of the UPCA after two years of its launch.