The role of Italian law firms in UPC litigation

As a European project, the UPC is also an interaction between patent specialists trained in national patent litigation who are now working at a joint court. Not only the way in which they work on pleadings, but also their views on the UPC are very different. Surprisingly often, Italian UPC representatives express their fears that, as time goes on, companies might not retain them for UPC proceedings in Milan as frequently as they would like.

The root of this fear lies in the idea that judges are guided by the aim of a uniform jurisdiction. Such a development could erode the importance of national perspectives and thus the national flavour of individual divisions. In turn, this could lead to clients deeming it unecessary to retain additional local lawyers who are familiar with the local judges.

Italians not at the fore

This assessment also partly reflects the role of many Italian IP teams in pan-European patent litigation. In the past, these teams have been much less active in a coordinating role than their colleagues from the UK or Germany. Accordingly, they do not necessarily see themselves as the client’s main point of contact in UPC proceedings, especially in life sciences litigation.

In fact, there are already some proceedings at the Milan divisions in which Italian patent litigators hardly play a role. In Insulet vs Menarini and Insulet vs Eoflow, for example, only one of three parties has instructed a team with local Italian lawyers.

The largest commercial case to date, Ocado vs Autostore, in which the Milan local division already settled in July 2023, saw Autostore retain the IP boutique Trevisan & Cuonzo. The firm is one of the local market leaders and has so far been the most active among the purely national law firms. Ocado chose the Italian boutique Bonelli Erede in addition to the German boutique Wildanger. Furthermore, UK boutique Powell Gilbert coordinated the global litigation and led the parallel national UK proceedings.

In addition to its leading role in these proceedings, Trevisan & Cuonzo is also representing Bhagat Textile alongside the UK law firm Powell Gilbert against Oerlikon. With its extensive experience in pharmaceutical proceedings in cooperation with law firms from other countries, this could also be a role model for other patent litigation teams in nationally independent law firms. However, the Italian teams of major international law firms in particular are sensing opportunities in UPC proceedings.

International firms in the wings

Many teams in international law firms are in the starting blocks for UPC litigation. For example, the Herbert Smith Freehills team led by Laura Orlando is representing Sanofi in a dispute with generic drug companies. The suit concerns the active ingredient cabazitaxel for treating prostate cancer, better known under the commercial name Jevtana. This is one of the first classic pharmaceutical proceedings in the constellation of originator versus generics company. The Herbert Smith Freehills team in this case includes lawyers from Paris, Düsseldorf, and Milan. But there are not many of these proceedings yet.

Bird & Bird ‘s Italian practice is involved in the extensive Dexcom vs Abbott case as part of an international team. This is a typical client for the firm in which it acts with teams from several offices. The Italian practice is also a participant in Menarini Diagnostics vs Insulet and the lawsuit of Cardo Systems against Shenzhen Asmax Infinite.

DLA Piper partner Gualtiero Dragotti is leading two of the firm’s UPC proceedings. He is working on the front line for Alpinestars against Dainese, a case which has already played out nationally in several countries. He is also in the lead for CAN against Truma Gerätetechnik.

Simmons & Simmons partner Stefania Bergia is also in the lead in several proceedings. She and her team are representing Oerlikon Textile against both Bhagat Textile and Himson Engineering. In addition, the Italian team is representing Danieli against Primetals.

Hogan Lovells is not yet active before the Milan divisions, but the team around Luigi Mansani represents Gucci together with colleagues from Munich in the dispute with AGFA.

So far, the Italian teams in international law firms have played different roles in the proceedings and a clear trend is not yet apparent due to the small number of cases.