HSF comments to JUVE Patent on expectations and aspirations for the UPC

On 1 June 2023, the Unified Patent Court (UPC) and unitary patent (UP) system finally launched, bringing with it fundamental changes to the patent landscape across Europe.

Laura Orlando, Milan Partner and Joint Global Head of Intellectual Property at Herbert Smith Freehills, was recently interviewed by Amy Sandys at JUVE Patent, alongside other private practice and in-house IP lawyers, to discuss some of their hopes, potential challenges, and what the UPC means to them.

When asked about her hopes for the new system, Laura said: “My hopes are that the UPC will provide an efficient and predictable service to patent stakeholders, streamlining their European patent litigation experience. My concerns are that this will take some time to establish, and that in the interim there will be significant delays to the progression of cases caused by jurisdictional wrangling, interpretation issues and references to the CJEU.”

She continued: “Once the UPC’s approach to the procedural elements are better understood and more predictable, I hope the new system will be widely used and appreciated.”

Recognising that the judges will likely face challenges during the early stages of the new court, Laura highlighted: “The rules on whether cases go to the local or central divisions of the court in the first instance are complex, including where separate revocation and infringement actions are commenced. Judges will need to make decisions on whether to bifurcate or stay proceedings. This will likely be a regular occurrence while parties try new strategies.”

“UPC procedure has been created from a combination of participating states, as well as UK procedure. There is no precedent for how to apply the rules and judges are likely to approach them with their own experience in mind. This could lead to variations in the approach of different local divisions, especially those with two local nationals on the panel.”

At a personal level, Laura said: "I celebrate the final arrival of the UPC, and confirmation that Milan will become the third seat of the central division. This is despite the UPC not yet clarifying the competencies, which certainly won’t be as broad as the former London competency. It has been a long period of uncertainty and there are bound to be some teething problems. But, now the UPC is finally here, businesses and lawyers alike need to support it in its early years and help make it a strong and well-respected forum.”

“My experience is that global clients are treating the UPC forum as an additional jurisdiction in their enforcement and defensive strategies.”

Just last month, the Italian government confirmed that the third Central Division seat of the UPC will be hosted in Milan – see our previous blog post here. The other two Central Division seats will be hosted in Paris and Munich.

The original article “Great UPC Expectations: voices from the market” was published by JUVE Patent on 2 June 2023.

More information about the UPC and unitary patent can be found on our dedicated UPC & UP Hub.

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We are able to use legal, technical and strategic skills from across our whole European team to give you the best advice on your UPC or national matters, with the qualifications necessary to handle cases whether they are in the UPC or key national courts.

For more information and advice on the new system, please contact Laura Orlando.

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