UK firms secure considerable slice of the UPC cake

When the UK government spokesperson dashed the hopes of UK patent litigators for the UK’s participation in the Unified Patent Court in February 2020, lawyer and patent attorney firms in London were perplexed and disillusioned. The supposedly lucrative business at the new court was suddenly out of reach. Meanwhile, across the Channel — especially in Germany — patent litigators were rubbing their hands in glee for having lost their biggest competition for profitable UPC cases.

But it turns out, London firms are as creative as they are enterprising. Four years later, the British are very much in the UPC business. UK law firms have secured a good slice of the UPC cake. Although they are nowhere near the high case numbers of German law firms, they have more cases than the Belgian, Dutch, Italian, or Scandinavian law firms. Only French law firms can rival the presence of their British counterparts. It is also a safe bet that UK partners and associates are taking part in UPC cases as members of pan-European teams in law firms such as Bird & Bird, Freshfields, Hogan Lovells, Simmons & Simmons, or Taylor Wessing — albeit rarely as main representatives.

Through the backdoor

At Taylor Wessing, for example, it is mainly the German and Dutch partners conducting the important proceedings for one of the firm’s most important clients. Abbott vs Dexcom and SiBio Bioscience concerning glucose-monitoring devices is the firm’s largest litigation series in Europe, including the UPC. Members of the legal team for Abbott include UK litigators such as Chris Thornham and Matt Royle, who themselves are not admitted to the UPC. Another major client, Ericsson, is also relying on an international Taylor Wessing team against Asus with the participation of UK lawyers.

At Simmons & Simmons, the German practice officially leads many UPC proceedings. For Samsung Bioepis, however, London partner Scott Parker is an important contact. He is part of the team representing the company against a complaint filed by Alexion with the UPC.

The London Freshfields partner Christopher Stothers gained considerable presence in the dispute with Ocado over public access to UPC documents. He is admitted as a UPC representative and, together with German and Dutch partners, is also directly involved in several proceedings, for example for Alexion against Amgen and Samsung Bioepis over orphan drug Bekemv. He is also active for SharkNinja against Dyson over vacuum cleaners and Kodak against FujiFilm over printing plate precursors. Freshfields is also playing a big part in other UPC cases.

Top of the pops

No UK law firm currently has as strong a presence at the UPC as Powell Gilbert. Whether for Asus, AIM Sport, SME Bhagat Group, Ocado or Edwards Lifesciences, the London litigation firm was or is still active in many of the UPC’s first cases. None of its rivals from London have managed this, and only a handful of its continental competitors can boast of having a stronger presence.

After the Brexit vote in 2016 and the withdrawl of the UK from the UPC four years later, Powell Gilbert was facing the same problems as many other UK IP firms. However, the Powell Gilbert partners were aware that in the future, Europe-wide coordination of large-volume proceedings — one of the firm’s strengths — would only be awarded to law firms with UPC expertise. They have since creatively sought their way to the UPC. They were quick to take advantage of the Irish route and opened an office in Dublin, where 15 lawyers are now admitted to practise in Ireland and thus also at the UPC.

Some competitors consider this risky, given Ireland has not yet ratified the UPC Agreement. But the vast presence of Powell Gilbert partners such as Siddharth Kusumakar, Ari Laakkonen or Rajvinder Jagdev in high-stakes UPC proceedings proves this was the right step.

The UK solicitors are not afraid of a challenge; they can now plead themselves at the UPC rather than having to let UK barristers litigate. The Powell Gilbert partners usually work with local litigators from their large European patent network. Now, they are going it alone for the first time to represent City Glass and Glazing at a local division.

Triple protection

Carpmaels & Ransford is another UK firm to have made a successful start at the UPC — but with a mixed approach. The firm has 90 European patent attorneys who were able to obtain admission to the UPC directly without having to take the detour via Dublin. Thus Carpmaels has secured its position at the new court.

Nevertheless, the firm wanted to ensure that its lawyers could also be at the forefront of the UPC and opened an office in Dublin anyway. This enables the firm’s UK solicitors to take the Irish route to the UPC where possible. Currently they work intensively alongside their patent attorneys for Sanofi-Aventis, for example.

The same applies for French-qualified litigator Agathe Michel-de Cazotte who acts in all UPC cases alongside Carpmael’s highly litigation-experienced European patent attorneys such as Daniel Wise for Sanofi-Aventis or Cameron Marshall for Curio Bioscience. Hiring her in 2022 was part of the mixed practice’s strategy to secure a good presence in UPC cases.

As a result, Carpmaels was present in the UPC’s very first life sciences disputes such as for Sanofi-Aventis and Novartis. In most of it’s cases Carpmaels acts alongside other firms — except for Curio Bioscience against 10x Genomics and bioMérieux against Labrador Diagnostics.

Pharma path to the UPC

Not only Carpmaels, but also Marks & Clerk and J A Kemp are very active in life sciences cases. Marks & Clerk’s lawyers are not yet admitted to the UPC, it must instead deploy its large patent attorney team at the new court, and yet Marks & Clerk still made a successful start in litigation here. It skilfully leveraged its strong position in the life sciences industry to be present at the UPC in the few but large-volume, high-stakes proceedings in this field.

A mixed team had already represented Pfizer in national disputes with GSK regarding features of RSV vaccines. Now the patent attorneys are acting as the main representatives in a revocation and infringement action at the UPC. They are cooperating with Clifford Chance as local advisors in Germany. Even though the Marks & Clerk lawyers cannot act as lead counsel for Pfizer, Mike Gilbert is working intensively on the case.

Jonathan Stafford, who has previously conducted EPO oppositions for Meril Life Sciences, is now also involved in various UPC proceedings against Edwards Lifesciences regarding heart valves. Although lawyers from Hogan Lovells and Gide are the main representatives, the bitter dispute between Meril and Edwards still promises Marks & Clerk a great deal of visibility in UPC proceedings for some time to come.

A Marks & Clerk’s team is representing Sumi Agro as main counsel in an infringement and a PI action brought by Syngenta over herbicides. The chemical company also brought in Bardehle Pagenberg as co-counsel for the two proceedings at the local division Munich.

Further pharma focus

UK patent attorney firm J A Kemp also has a well-known focus on advising pharmaceutical and biotech companies. It continued this work at the UPC. Right from the start, its regular clients Healios and Osaka University involved the firm in revocation actions brought by Astellas over two biotech patents. The patent attorneys had already defended both patents against Astellas’ challenges at the EPO. The two proceedings at the Munich central division are so far the only UPC cases in which the firm’s partners are the main representatives.

J A Kemp partners are also operating in the background in two other major pharmaceutical disputes, in which large law firms have the lead in the courtroom. In both, J A Kemp’s patent attorneys are also defending the patents-in-suit at the EPO against oppositions from competitors.

Patent attorneys present

All in all, J A Kemp is one of the most present UK law firms at the new court, albeit with significantly fewer cases than Carpmaels. With big-name clients in the life sciences sector, both Marks & Clerk and J A Kemp have the potential for a stronger presence in UPC cases.

The same applies to Potter Clarkson. The mixed firm was also present in two pharma cases from the very beginning. The UK patent attorney firm with its own litigation department is representing Astellas in two revocation actions against Healios and Osaka University, but the firm did not make it into JUVE Patent’s UPC ranking this year.

Dehns, on the other hand, prevailed with a technically broader focus in UPC cases. Thanks to its close ties to core clients, this patent attorney firm was one of the few UK firms to be present at the UPC from an early stage. Laura Ramsay, for example, advised AutoStore in its dispute with Ocado together with other law firms even before the UPC launch. She and her team worked in the background in other national proceedings in which other law firms had the lead. When Ocado then took the battle to the UPC, Ramsay was a main representative in one of three proceedings. But the two companies settled the dispute very early on, so the Dehns team could did not get the chance to shine in the courtroom.

Dehns is also co-counsel with Kather Augenstein and Hogan Lovells for Advanced Bionics in infringement and revocation actions against MED-EL over cochlear implants. Other Dehns partners showed that patent attorney firms can successfully conduct cases independently at the UPC without the involvement of law firms, such as for Carrier Corporation and Stanley Black & Decker.

A hesitant start

One law firm that many had envisioned as a permanent fixture at the UPC got off to a slow start. Top London law firm Bristows had already backed the UPC in the mid-2010s. Its partners were heavily involved in the court’s development. Bristows even established its own portal through which it provided detailed information on current UPC developments. At the time, many saw Bristows as the UK law firm with the greatest UPC ambitions. A three-way merger with Vossius & Partner and Brinkhof was on the cards for a long time. But then Brexit changed everything for Bristows.

As a result, the firm remained independent and continued to rely on the admission of individual partners via the Irish route. It also opened its own office in Dublin in September 2023. The firm has also had an office in Brussels for some time, where Gregory Bacon is registered as a UPC representative via the Belgian Bar. In Brussels, Bacon sued competitor Orbisk over a system for monitoring food waste on behalf of Winnow Solutions. The case was Bristows’ only UPC case for a long time.

In the meantime, their UPC activities are picking up speed. JUVE Patent has learned from well-informed sources that a big pharma client recently relied on Bristows alongside Freshfields in a newly launched case.

Special routes

Bristows also plays an indirect role in another major UPC lawsuit. Bristows lawyers are part of the team advising Panasonic in the mobile phone battle against Xiaomi and Oppo. The case is playing out in the UK, Germany and at the UPC and is currently heading for a settlement. A Bristows team is conducting the UK proceedings for Panasonic.

However, this dispute last autumn showed how closely the events in London and at the UPC are intertwined. The first UPC hearing took place in the aftermath of the UK Court of Appeal ordering an interim licence for Xiaomi. In the FRAND proceedings between Panasonic and Oppo, the UPC judges wanted to know exactly how this would affect Oppo. Oppo’s UK lawyer and Pinsent Masons partner James Marshall was present in the Mannheim courtroom and had to provide information on the spot. Panasonic’s UPC team around Kather Augenstein and Bristows are also likely to have coordinated closely.

Singular approach

Kirkland & Ellis also represented Xiaomi in the dispute with Panasonic. The US law firm is currently concentrating its European patent litigation team in London around partner Nicola Dagg and is dispensing with teams on the continent.

Although Kirkland has offices in Germany and France, it does not yet have its own UPC representatives. At present, the London team usually acts as a coordinator in the background in major UPC battles. In addition, it usually conducts parallel UK proceedings.

The most prominent example is the dispute for Xiaomi against Panasonic, in which it obtained an interim licence from the UK Court of Appeal. However, German teams from Freshfields and Hogan Lovells conducted the UPC proceedings. In the UPC disputes between Lenovo and Ericsson and the long-settled dispute between Autostore and Ocado, Kirkland lawyers also coordinated the proceedings while German partners from Hoyng ROKH Monegier and Wildanger led them.

However, there has long been a debate in the market as to how long the US law firm can afford this special approach. Or whether, in the end, the temptation to take a bigger slice of the lucrative UPC business will prove too great.