An artful approach

For many years, Bristows was the UK firm perhaps most closely associated with the arrival of the Unified Patent Court. It frequently kept those interested in the court project up to date about even the tiniest UPC developments via its blog, which the patent community oft-quoted as a valuable resource.

In cementing this interest, Bristows sent a clear signal to the global patent community that the firm is pro-UPC and intends to play an instrumental role. But then came Brexit and ultimately, in February 2020, the UK’s final rejection of the new court. Practically overnight, the ambitious UPC plans of Bristows and other UK firms came to a crashing halt.

The UK will no longer participate in the UPC, with British lawyers no longer authorised to represent clients at the new patent court. An exception is if they have Irish heritage, but this will only be relevant if Ireland ratifies the UPC Agreement. Until last year, it was also not clear that European patent attorneys from the UK would be entitled to lead UPC proceedings.

As such, UK IP boutiques had to completely rethink their strategies. Like Bristows, other UK firms with prominent litigation teams such as Powell Gilbert, Carpmaels & Ransford, and Marks & Clerk wanted to play a prominent role at the UPC. As one leading litigator summed up in 2020, “We’ll now have to focus on national patent litigation and hope that the High Court remains an attractive court for patent cases.” Now most UK firms are developing strategies to get around the current barriers.

Important patent forum

Despite Brexit, the London patent courts have so far held their ground as an attractive venue for litigation alongside the US, China and Germany. So far, the UK High Court is the only court willing to set a global FRAND rate in global mobile communications licensing cases, as it demonstrated just a fortnight ago in its InterDigital vs. Lenovo ruling.

Standard essential patent holders like to file suits here, in parallel to Germany and the US. Even in pan-European disputes over medicines, action is frequently taken in London, if only from the generics side to invalidate the patent or SPC for an original drug.

Although the number of new cases filed at the High Court has declined steadily since 2019, according to the court’s own statistics – from 50 new lawsuits in 2021, to 35 in 2022 – the judges are nevertheless busy. Proceedings are becoming more elaborate and complex, with a dispute such as InterDigital against Lenovo usually involving several individual lawsuits. In this case alone, it is one FRAND trial (case no. HP-2019-000032), as well as several technical trials (case ID: CA-2021-003431; case ID: HP-2019-000032; case ID: CA-2022-001060).

I want it all, I want it now  

Thus, market observers expect the UK patent courts to remain attractive after the UPC opens. A parallel co-existence may emerge, whereby litigating companies take advantage of both court systems.

This effect could be heightened with UK firms now looking for ways into the UPC system. With their dominant position in coordinating international patent proceedings, they have higher ambitions than merely litigating in UK cases. But, to defend their slice of the lucrative coordination work, against German and Dutch firms especially, the firms must demonstrate their expertise in UPC issues.

Many German firms see themselves at an advantage in the long term, because UK firms must be creative to get their lawyers actively involved in UPC proceedings. But in doing so, some UK firms are looking for more than just regional work.

Pillars of proceedings

Brian Cordery

Brian Cordery, partner at Bristows, says, “The fact that there is no longer a London division certainly doesn’t make it any easier for UK law firms, as our lawyers are having to requalify in contracting member states.”

“But now that the initial shock of the UK’s withdrawal from the UPC has subsided and the environment has calmed down considerably, we definitely intend to play an active role at the UPC”, he says.

Myles Jelf, another partner at Bristows says, “We see our UPC business as being based on three pillars: firstly, proceedings in the UK patent courts running parallel to UPC disputes; secondly, the coordination of international proceedings generally where UPC cases will play an important role; and thirdly, acting before the new court directly.”

He continues, “We therefore not only want to offer our knowledge of the UPC, the Rules of Procedure and future case law to our clients, but also play an active role for them in proceedings.”

Due to its strong focus on competition law, Bristows has had an office in Brussels since 2018. Now some UK patent litigators qualify for admission to the bar in Belgium, which has, for example, recently admitted partner Gregory Bacon. Thus, lawyers such as Bacon will meet the requirements to conduct UPC proceedings. He is also admitted to practice in Ireland, with a number of Bristows’ patent lawyers including Myles Jelf and Brian Cordery set to follow suit.

Playing the Irish card

The Republic of Ireland, however, has not yet ratified the UPC Agreement, although interested parties and lobby groups are putting pressure on the government to announce a referendum. A positive outcome would mean the Irish government could complete the ratification quickly, and Dublin would be the seat of a local division. According to Kluwer Patent Blog, the Irish government has pledged to hold a referendum on UPC participating by 2023 or 2024.

Myles Jelf

If Ireland was part of the UPC, Dublin could be the gateway for many UK patent lawyers with Irish roots. An Irish licence automatically authorises them for UPC proceedings.

For this reason, Bristows also plans to open its own office in Dublin. Jelf says, “We are in the final planning stages, with the intention that the new office will open its doors in the coming months.”

But what happens if Irish ratification is delayed further is still disputed. It is still unknown whether lawyers from countries that have signed the UPC Agreement, but not yet ratified, can also be admitted as UPC representatives.

Wait-and-see strategy               

Like Bristows, Powell Gilbert is a leading boutique firm in the London patent market. It also generates income through its coordination of international patent disputes, and will have to demonstrate active experience in UPC cases in order to claim its share of coordination work.

Peter Damerell

But unlike its arch-rival, Powell Gilbert is far more reluctant to make strategic moves. “We remain a UK-based IP firm for the time being and have no plans to open offices in the current UPC area,” says partner Peter Damerell. “We are monitoring the development of the UPC and the needs of our clients. If those require us to change our offering, we’re flexible enough to be able to respond quickly.”

However, Powell Gilbert’s decision to forgo locations in UPC countries for the present does not mean the top UK law firm does not want a big piece of the UPC pie. Penny Gilbert says, “We are very confident that we will play an active role in UPC proceedings.” She adds, “There is nothing to stop us from working as part of multinational teams and running UPC cases.”

Like many London patent firms, Powell Gilbert is also playing the Irish card. The firm explained to JUVE Patent that all its partners are admitted to the Irish Roll of Solicitors.

No obstacles for UK patent attorneys

On the other hand, in 2022 good news came when the UPC Administrative Committee confirmed that European patent attorneys from countries not participating in the UPC can actively conduct UPC proceedings, as long as they have obtained an additional litigation certificate. Most UK patent attorneys, as well as Swiss patent attorneys, had already secured the necessary document before the country withdrew from the court project.

Now most UK patent attorney firms are able to run UPC cases. Many, like HGF, Marks & Clerk, Reddie & Grose and Withers & Rogers, already have offices in the relevant countries. The firms often set up shop in Munich, for example with Boult Wade Tennant, Forresters, Mathys & Squire and Mewburn Ellis recently bolstering their offices in the Bavarian capital with patent attorney hires.

Other cities such as The Hague are also popular – Kilburn & Strode, for example, is focusing primarily on its Dutch practice. However, these firms do not generally have lawyers in their ranks. Most experts believe it is a good idea for patent attorneys and lawyers to run UPC cases together, given the case complexity, as well as the many procedural and legal pitfalls.

Do it the Carpmaels way

One example of a firm pursuing this approach is Carpmaels & Ransford, a leading patent attorney firms for life sciences. As early as 2014, the firm integrated its own lawyer team in London, partly due to the assumed proximity of the UPC. Of course, Carpmaels wants to transfer its strength to UPC litigation; it has invested a lot to ensure that the firm will play an important role.

But Brexit also forced Carpmaels to make a pivot. However, its highly litigation-experienced European patent attorneys, although mostly UK nationals, can represent cases before the UPC. Some of its UK lawyers are also seeking an Irish licence.

Agathe Michel-de Cazotte

Furthermore, in hiring French-qualified litigator Agathe Michel-de Cazotte, a partner also experienced in German and UK patent law, the firm has a foot in the UPC door. It has the capability for its lawyers to represent clients at the court.

For now, Carpmaels bundles the majority of its patent attorneys and litigation practice in London. But the firm also has offices in Dublin and Munich, which it can staff on a long-term basis, including with future litigator hires. Such a model is bound to secure the firm’s future as an important player at the UPC.

The market is in motion

The London patent teams of international firms are currently under less pressure than the UK IP boutiques. The UK government’s decision not to participate in the UPC took away the pressure of internal competition between the national groups for these firms.

Bird & Bird’s market leading German and UK partners for example no longer have to jostle for the lead role in the courtroom if Nokia demands action at the UPC. Now, in all likelihood, the UK partners can even bill for parallel UK lawsuits while joining UPC cases in the background.

Most leading patent teams in international firms such as Allen & Overy, Bird & Bird, Freshfields Bruckhaus Deringer, Hogan Lovells and Taylor Wessing invested very early in a broad European set-up. On the other hand, other internationally positioned teams are busy fine-tuning their pan-European set-ups. Unlike Bird & Bird or Hogan Lovells, these firms are not currently at the top of the market. But they are striving to get there with the UPC, strengthening their teams to do so.

UPC behind growth

Pinsent Masons for example, has carved out a particularly strong position in London, and recently invested in a hard-hitting Amsterdam team. Here, the firm welcomed dual-qualified András Kupecz, who had a strong reputation as a solo lawyer for pharma cases, as well as pharma litigator Judith Krens, who joined from Taylor Wessing.

Kristina Cornish

Such growth, coupled with its well-positioned Paris team, means Pinsent Masons is equipped to handle UPC proceedings – although its focus is likely to be concentrated on the life sciences sector. But after some departures in recent years, the firm must also invest in its German patent team.

The firm’s strong London team also covers the UK market parallel to its focus on the UPC. As such, Pinsent Masons’ approach is likely to appeal to pharma clients, old and new.

The London office also recently brought in patent attorney Kristina Cornish, who is highly renowned for her pharma litigation skills. Most experts assume that cases which combine nullity and infringement issues will dominate UPC proceedings. A mixed approach with patent attorneys and lawyers thus makes sense.

Attack on market leaders

Simmons & Simmons, which is headquartered in London, is another firm which has turned its attention to growing its pan-European patent attorney team.

In early 2022, Simmons & Simmons landed perhaps the biggest coup when it took over almost the entire Munich office of Isenbruck Bösl Hörschler. The seven new Munich patent attorneys have a strong life sciences speciality. While the firm had already hired patent attorneys in London and Amsterdam prior to this decision, the move marked its first serious foray into Germany.

Former leading London partner and current of counsel Kevin Mooney is still involved in the preparations for the new court. Because of Mooney’s involvement, Simmons & Simmons chose to position itself as UPC specialists. Building on the strong litigation team in London, it expanded its teams in Amsterdam, Düsseldorf, Munich and Paris. Hiring patent attorneys was Simmons’ final, consistent step to launch its attack on the European market leaders.

Spider in the web

Like their European counterparts, UK firms must also consider assembling teams with expertise according to the jurisdiction in which a client brings its UPC case. For example, if a client wishes to file a suit before the Nordic Baltic Regional Division in Stockholm, firms might turn to a local lawyer from Sweden or the three Baltic countries to determine how the judgment might look.

For internationally positioned firms like Simmons & Simmons, Bird & Bird or Hogan Lovells, this is less of a potential hurdle. These firms can assemble teams from their own national groups, bringing in a local firm from an outside country if necessary. On the other hand, IP boutiques like Bristows or Powell Gilbert will have to rely on their network and contacts among similarly positioned firms in the UPC states.

Brian Cordery says, “The coordination of such cases remains complicated even with the UPC. Instead of several parallel national European proceedings, we may have only one UPC case in the future. But the judges come from different countries with different traditions, and so we think clients will want to bring law firms from those countries into the team accordingly and we have many years of coordination expertise to help them do that.”

Background chatter

Bristows, like Powell Gilbert or even the Kirkland & Ellis patent team, has many close ties with national, independent IP boutiques. Because of this central role in coordinating major proceedings, continental firms are continuing to court UK firms, which can enjoy this comfortable position. They must be wary, however – continental firms could use their stronger positions to muscle in on this approach.

Most UK patent firms shy away from exclusive cooperation with litigation firms from UPC countries. However, mixed firm EIP, which already has a well-positioned litigation team in Germany and an office in Stockholm, recently took a different path. In future, it will cooperate closely with top French outfit Amar Goussu Staub on UPC cases.

Penny Gilbert

A new way around

But even if the UPC did not authorise UK lawyers to represent clients in the courtroom, British lawyers could work on cases in the background as members of the trial teams. They could play a decisive role in determining the conduct of the proceedings.

Penny Gilbert says, “We already play a significant role for clients in some proceedings before the German and other European courts, why shouldn’t that also be the case in UPC proceedings?”

So while local litigators are running cases at the UPC chambers, UK lawyers could be pulling strings in the background.

“As UK lawyers, we are regularly asked by clients to develop and co-ordinate European litigation strategy, so we have the ability to look at the bigger picture and not just national litigation factors. That’s very important when we talk about UPC cases,” says Gilbert. “Hopefully it’s an advantage for us.”

US firms take a stance

Kirkland & Ellis’s London patent litigation team is also hoping to play this card. In 2018, the US firm brought in a team led by Nicola Dagg from Allen & Overy. With the momentum of one of the strongest US patent practices behind her, Dagg consistently expanded the London team, who the market frequently sees in UK patent suits.

Nicola Dagg

However, while the Kirkland practice is a real rival to market leaders Bristows and Powell Gilbert, its London team benefits from a great deal of referrals from the US. In its work for British American Tobacco over cigarette technology, Autostore over retail automation systems and Alcon over laser systems for cataract surgery, however, the London partners also coordinate the proceedings on the continent.

In doing so, Kirkland brings on board national IP boutiques such as Vossius, Brinkhof and Arnold Ruess.

Kirkland has no ambitions to establish its own patent litigation team in Munich, where the full-service firm already has an office. Neither will it open an office at another UPC venue. Its current aim is to get in on the UPC action through its London team.

Another top US firm is pursuing a similar, focused strategy. Quinn Emanuel Urquhart & Sullivan is concentrating on the strong German patent litigation team led by Marcus Grosch, despite having offices in London and Paris in Europe. Unlike Kirkland, however, Quinn Emanuel is positioned directly at the UPC. The firm has offices in Hamburg, Mannheim and Munich, where patent activity features heavily in its work.

Going it alone

The UPC can directly admit Quinn Emanuel’s German lawyers to represent clients in court proceedings. The lawyers intend to cover the court’s other locations either themselves, or by bringing in local firms.

Like Kirkland & Ellis, Quinn Emanuel also has no ambitions to open further UPC offices with patent teams. The reason for this stems from within the firm, which has a highly profitable patent litigation team that contributes significantly to turnover.

Both Kirkland and Quinn emphasise that they apply this standard when it comes to new partner additions, which possibly limits their options to just a few partners in Europe. Most of the leading partners currently seem unwilling to move anyway. But even so, the two US firms are keen that the most prominent UPC cases involve their most prominent lawyers.

Knocking on the UPC’s door

On the other hand, many US firms are yet to make the leap into continental European patent law, although some have been knocking on the door of European litigators for years. Top US firms like WilmerHale, Latham & Watkins, Cooley or Morrison Foerster will probably not be present with their own patent litigation teams in any of the UPC countries at the launch in June.

But IP boutique Finnegan Henderson Farabow Garrett & Dunner made its foray into the German market in 2022. The US firm opened an office in Munich, staffed with an experienced team from international firm Baker & McKenzie. Dual-qualified litigator Jochen Herr leads the team. It also has also a presence in London. But to coordinate complex UPC proceedings in parallel, Finnegan will probably still have to grow by one or two partners from UPC countries.

Jones Day, McDermott Will & Emery and DLA Piper, which are already present for UPC work with well-positioned teams, can also benefit from this, albeit not at the same level as Kirkland or Quinn Emanuel. To compete in the premier league of UPC advisors, they too will probably have to add one or two top partners.

An artful approach

Adding up the ambitions of some US and UK firms, their financial clout and their business acumen, it is safe to assume that some will make their mark on the UPC. The UK’s withdrawal from the UPC project has not shut firms out. However, the decision has made life much harder.

Contrary to expectations, the UK firms may become tough competition for their German and Dutch counterparts. After all, they too want to be at the forefront of the major, lucrative cases in the mobile communications, pharmaceutical and medical device sectors. (Co-author: Amy Sandys)

JUVE Patent analyses the UPC set-up of all litigation firms listed in the patent rankings in the “European set-up” section. Read, for example, the latest analysis of UK firms.

Read part one of this UPC long read series “Race to the top”, where JUVE Patent examines how continental firms are getting into position for the UPC.