Italian government confirms Milan will host third UPC central division

Following months of discussion, Milan has been 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 will now submit this to the other UPC contracting states during the next meeting of the Administrative Committee, to secure formalisation.

While the Italian government hopes to have the third central division location up and running within the year, an amendment to the current UPC treaty is required before Milan can officially take over the role. This requires the contracting member states to decide jointly on an amendment to the Agreement on a Unified Patent Court (UPCA).

Milan’s UPC timeline

In September 2020, the Italian government officially announced its choice of Milan, capital of the Lombardy region, to host a UPC central division. The bid came just months after the UK officially withdrew its ratification and left London out of the running to host UPC pharmaceutical cases from its central location of Aldgate Tower, near the City.

The issue remained on the agenda for a couple of years, although parties did not make much progress. Then, in late November 2022, the Italian Minister of Justice Carlo Nordio met with his German counterpart Marco Buschmann in Berlin to discuss the cooperation between Italy and Germany on a number of important issues, including further collaboration regarding the Unified Patent Court and the location of the central division’s third seat.

Earlier the same month, Nordio had also met with French Minister of Justice Éric Dupond-Moretti in Paris. Here, according to a press release, he “reminded his French colleague of the importance for Italy of the timely establishment of the third central division of the Unified Patent Court in Milan, alongside Paris and Munich”.

However, according to JUVE Patent sources, it remains unclear exactly which competencies the UPC will allocate to Milan. In March 2023, before the Italian government had declared Milan as the third seat, Italian business paper Il Sole 24 Ore reported that discussions had developed to focus on the proposed distribution of the International Patent Classification (IPC) classes between the three central locations. In yesterday’s announcement, the ministry states that it will hear patent cases “in sectors relevant to the Italian entrepreneurial system”.

Competencies remain unclear

But, for months, there has been discrepancy 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.

According to the UPCA, Paris, which also hosts the president’s office, also has jurisdiction over cases involving textiles and paper, fixed constructions, physics, and electricity. The original agreement allocates mechanical engineering, lighting, heating, weapons, and blasting to the Munich section of the central division. Now both cities have taken over several of the previous allocations for London, too.

Previously, JUVE Patent sources suggested that those in charge of Italy’s UPC operations may be prepared to accept some compromises. For example, while Munich is now handling metallurgy-related patents, some speculated that Milan could retain competency to hear chemistry cases. A counter-argument also proposed handing pharmaceutical patents with SPC cases to Paris, but only where the patent’s infringement or validity is not up for debate.

According to a LinkedIn post from Mattia Dalla Costa, president of LESI Italy, 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. However, JUVE Patent does not have confirmation of this.

To the courthouse

Originally, London was to host the third central division, but the UK withdrew from the UPC project due to the consequences of Brexit. Following this, either the Netherlands or Italy were in the running to host the third seat. However, in July 2022, the Dutch government confirmed that it would withdraw capital city The Hague as an official candidate for the third seat.

Current mayor of Milan, Giuseppe Sala of the Democratic Party, had strongly advocated for Milan to host the UPC central division, although the 5 Star Movement party had plumped for Turin. While ultimately settling for Milan, the Italian government did reach a compromise. If successful in its bid, Milan will host the UPC’s central division, while Turin will be the seat for the Italian Institute for Artificial Intelligence.

Previously, Italy had declared that the Milan Courthouse would host the third central division seat, although it has not re-confirmed this will be the case. Now how the UPC’s Presidium, or its Administrative Committee, sees fit to allocate competencies is next on the agenda. It remains to be seen how Milan hosting such an integral part of the new pan-European patent system will impact the Italian patent litigation market.