French law firms race to adapt as UPC reshapes patent litigation landscape

Paris ranks among the most active non-German UPC locations. According to late February statistics, the Paris local division has 17 infringement actions, while the central division has one. The central division in Paris currently has 41 revocation actions pending, as well as two counterclaims for infringement.

The Paris central division leads in revocation actions, well ahead of Munich with eight actions and Milan with seven. Notable cases include Bentley vs Network Systems Technologies, Advances Bionics vs MedEL and Meril Life Science vs Edwards Lifesciences. Among the significant judgments from the Paris central division are those in the extensive dispute between NJOY and Juul labs and VMR Products over e-cigarettes.

The dispute between Dexcom and Abbott, heard by the Paris local division, also drew attention. The parties settled after the UPC judges invalidated one of the patents. ICPillar and ARM Group also settled before the local division could deliver its judgment.

Paris division strengthened

As case numbers increase, the UPC has expanded its judicial bench at the Paris central division. Since 1 March, legally qualified judge and Dutch national Marjolein Visser has joined the panel. She works alongside the French president of the court of first instance Florence Butin, primarily on central revocation actions. The panel also includes Italian judge Paolo Catallozzi, German judge Maximilian Haedicke, French judge François Thomas and Bulgarian judge Tatyana Zhilova.

Earlier changes among French UPC judges saw Emanuel Gougé, former partner at Pinsent Masons Paris, take over from Françoise Barutel at the Court of Appeal in Luxembourg in spring 2024.

Law firms pivot to UPC

Gougé’s move to the UPC judiciary affected Pinsent Masons’ practice, where Jules Fabre, a pharmaceuticals specialist, now leads the IP team. The French legal market has seen other significant changes. Some practices strengthened through lateral hires, while others brought in entire teams or opened new offices at UPC locations outside France.

“The moves reflect firms’ efforts to better position themselves for UPC work”

These moves reflect firms’ efforts to better position themselves for UPC work. Of roughly 80 infringement and revocation actions filed with the Paris divisions, almost half are not handled by French lawyers.

Bardehle Pagenberg made the first move, bringing in Fréderic Portal from Bird & Bird in January 2024. Until then, partner Julien Fréneaux’s French team was known mainly for representing Intellectual Ventures in France. Portal’s dual qualification strengthens the firm’s legal and technical expertise, particularly in life sciences.

In the firm’s first French-led UPC proceedings, Portal represents Gisela Mayer against N.J. Diffusion regarding wig manufacturing processes. In many other Bardehle cases, including those before Paris UPC divisions, the German team maintains the lead.

In spring, Abdelaziz Khatab moved to Simmons & Simmons from August Debouzy, where he had built a strong reputation. His extensive experience in standard-essential patent cases adds valuable expertise to a practice well-positioned for Paris central division cases through its established UK, Dutch and German teams. However, mainly the Dutch, Italian and German teams handle Simmons & Simmons’ UPC work.

Weeks later, Reed Smith partner Marianne Schaffner joined Gowling with three lawyers. While the British firm has a strong London patent team, it lacks prominent patent practitioners in continental Europe. Gowling’s French IP team, previously known mainly for soft IP, is now emerging in patent disputes. Celine Bey’s team works with London colleagues representing Molecular Instruments against Advance Cell Diagnostics at The Hague local division.

Major moves and mergers

Most recently, David Por joined Clifford Chance in early March with a counsel and two associates. Por, formerly of A&O Shearman and experienced in mobile communications litigation, complements the Düsseldorf team of Tobias Hessel and Stefan Richter. His previous firm retains Laetitia Bénard and Charles Tuffreau in patent litigation, focusing on life sciences. The firm also added a Sanofi patent attorney, advancing its mixed approach.

“French firms are expanding beyond Paris to UPC locations”

Early 2025 also brought team moves and mergers. The eight-strong IP practice of Aramis IP joined Jeantet, which previously lacked dedicated IP expertise. Benjamin May’s former Aramis team brings extensive pan-European litigation experience, particularly in life sciences, demonstrated through work for Allergan and Fresenius Medical Care.

Other French firms are expanding beyond Paris to UPC locations. Last summer, Lavoix acquired Italian IP firm Giambrocono, strengthening its Milan presence as the UPC central division opened there. The mixed firm also added two chemistry-specialist patent attorney partners and recruited a junior lawyer from Hoyng ROKH Monegier. The team represents regular client ArcolorMittal against multiple defendants at the Paris local division.

Casalonga recently bolstered its Munich office with partner Denise Nestle-Nguyen from German patent attorney firm Stolmar. The mixed French firm plans to open in Düsseldorf this summer. Known for pharmaceutical litigation nationally, Casalonga recently took on its first UPC case, representing Maguin against Tiru’s claims.

Meanwhile, Plasseraud continues expanding. The French IP firm opened in Amsterdam in January, hiring partner and patent attorney Johan Renes from Simmons & Simmons. Simultaneously, merging with French IP boutique Candé Blanchard Ducamp added five lawyers, including two partners, to Plasseraud IP Avocats. The merger partner lacks patent litigation visibility, having only one experienced partner here. However, Plasseraud patent attorney Denis Boubal worked with Bonabry lawyers (formerly Preu Bohlig) representing Fives against Reel at Hamburg’s local division and Luxembourg’s Court of Appeal.

International firms lead the way

French teams mainly appear before Paris UPC divisions and less frequently than German firms elsewhere. Unlike Bardehle Pagenberg, which appears in Paris with predominantly German teams, many firms rely on French offices for local representation.

“French teams mainly appear before Paris UPC divisions”

Unusual arrangements include the Sanofi vs Accord dispute at Munich’s local division, where French partners lead international teams on both sides: Herbert Smith Freehills’ Frédéric Chevallier for Sanofi against Pinsent Masons’ Jules Fabre for Accord.

Bird & Bird, among the most active UPC firms, emphasises multinational teams. Ann-Charlotte le Bihan’s French practice leads several cases at the European court, including Dexcom vs Abbott (settled late 2024), and I.G.B. vs Unilever at the Paris local division. It is thus logical that the Paris team strengthened its associate ranks.

Hoyng ROKH Monegier, whose national offices traditionally collaborate closely on pan-European cases, naturally staffs UPC cases with multinational teams. The Paris office handles proceedings for Fujifilm (against Kodak), Hurom (against NUC) and, until the settlement, Magna (against Valeo) at the Paris central division. The team maintains visibility in national proceedings, representing Biogen against Teva regarding Tecfidera at the Judicial Court Paris and Bouygues Télécom and Orange against Intellectual Ventures over SEPs at the Paris Court of Appeal.

Linklaters represented Intel against Intellectual Ventures nationally and now handles several UPC proceedings for Seoul Viosys against Laser Components and Photon Waves at the Paris local division. The French team benefits from established close cooperation with German patent litigators. Jones Day also emphasises cross-border cooperation, with German-French teams handling UPC proceedings for Vibrantz, Biomarin and Peri at Munich’s local division.

“Traditional French firms generally show less UPC presence”

Other French IP teams from large international firms, such as Simmons & Simmons or Hogan Lovells, have lower UPC profiles despite their firms’ strong overall UPC presence and international teams. However, Hogan Lovells partner Stanislas Roux-Vaillard represented Reflection Investment, an Oppo distribution partner, in the now-settled Panasonic dispute. The small team remains active nationally for clients like Hoffmann La Roche over Herceptin and Orange against Assia.

Traditional French outfits lag behind

Traditional French firms generally show less UPC presence than international firms’ patent teams. August Debouzy stands out among French firms here. The mixed team under Grégoire Desrousseaux and François Pochart represents Hewlett-Packard Development (vs. Lama France), plastics manufacturer Nicoll (vs. First Plastic) and IC Pillar (vs. ARM until the settlement).

Following several departures, including Abdelaziz Khatab to Simmons & Simmons, August Debouzy is rebuilding and recently appointed two counsel. The patent lawyers remain active nationally, particularly for Teva against Daichi Sankyo (settled 2024), against MSD concerning Inegy and against Novartis concerning Afinitor.

Gide is currently handling an extensive UPC dispute for Meril against Edwards with cooperation partner Regimbeau. However, most work remains national, such as representing BMS against Teva over apixaban and Teoxane against FilMed over dermal fillers.

DTMV, renowned for national proceedings, has yet to appear before the UPC.

Boutiques make their mark

While large, often international firms handle most UPC cases, small boutiques occasionally make their mark with select proceedings.

Armengaud Guerlain has two clients at the UPC: Ecareyou (against Fridababy) and N.J. Diffusion (against Gisela Mayer). Meanwhile, a team consisting of Bonabry (formerly Preu Bohlig) and Dhenne Avocats brought a now-settled action for Cané against France Développement Electronique. IP boutique Cousin & Associés represents First Plastic in a UPC case against Nicoll.

Additionally, Amar Goussu Staub recently entered the UPC arena. Name partner Cyrille Amar filed a suit at the Paris local division with UPC cooperation partner EIP for Tiru against Valinea and Maguin.

Schertenleib is handling several UPC cases. For example, the team filed a claim at the Paris local division for British firm HGF’s client C-Kore Systems against Novawell, which settled. The firm’s work remains strong in national litigation, especially pharmaceuticals where it is highly renowned and recently secured several victories. The team handles the French parts of major pan-European pharmaceutical cases for regular client Viatris against various opponents, including against Bayer over Xarelto, Novartis over Gilenya, MSD over Janumet, and Biogen over Tecfidera. Furthermore, the team is expanding into new technologies, representing automotive supplier Akwel against Stellantis and handling its first UPC case for C-Kore.

Beau de Lomenie is one of the few pure patent attorney firms leading UPC cases. Partner Didier Intes is defending NUC Electronics against Hurom in a claim over household appliances and lawyer Gaston Vedel represents Valinea Energy against Tiru. The firm specialises in filing and prosecution concerning electronics, mechanics and IT technology. Furthermore, Henri Bourgeois of patent attorney firm Germain Maureau represents Lama France in the dispute against Hewlett Packard Development.

“Most smaller firms remain focused on national proceedings”

While small firms can position themselves at the UPC for individual cases involving small and medium-sized clients, most, including Loyer Abello and Szleper Henry Naumann, plus most small and medium-sized patent attorney firms, remain focused on national proceedings or EPO oppositions respectively. Examples include Abello’s work for SFR against Intellectual Ventures and Szleper Henry Naumann’s litigation for Roche against Biogaran, as well as Dhenne Avocats’ representation of Fischerwerke.

Landmark decisions from national courts

National courts remain popular for patent disputes. At the time of going to press, the Paris Judicial Court’s 3rd chamber had not yet released case numbers for 2024. In 2023, new patent disputes in the IP chamber rose steadily to 186 from 145 in 2020.

The trend for 2024 remains unclear. Sources tell JUVE Patent that French courts actively encourage mediation. This, combined with the UPC’s growing appeal, could reduce future litigation.

Nevertheless, national courts issued significant decisions in French segments of pan-European litigation last year, particularly in the pharma sector. One prominent example is the ruling on Sanofi’s chemotherapy drug Jevtana. In addition, a Court of Appeal judgment in Intellectual Ventures’ SEP dispute with various implementers drew particular attention.