With the Headquarters Agreement for the Milan seat concluded, we look at the role of the UPC central division

As the Headquarters Agreement for the Milan seat of the Unified Patent Court's central division is signed, confirming that all is in place for the new seat to begin operation this year, we look at the role of the central division in UPC patent actions under the UPC Agreement (UPCA), UPC Rules of Procedure (RoP) and as illustrated by early UPC decisions, as well as the composition of central division judicial panels.

Milan Headquarters Agreement: The Headquarters Agreement was concluded last week between the Unified Patent Court (UPC) and the Italian Government, at the Italian Ministry of Foreign Affairs (see the Ministry's press release here).

Italian Deputy Prime Minister and Minister of Foreign Affairs and International Cooperation, Antonio Tajani commented, “the signing of this agreement represents another significant step in the Italian Government’s efforts to promote the protection of industrial property, a crucial element for the growth and competitiveness of our country”; also adding that “with the Headquarters Agreement – the first in Europe since the Patent Court came into operation – Italy wishes to strengthen its cooperation with the UPC and undertakes to ensure that the UPC offices in our country can operate under the best conditions”.

This agreement follows the decision of the UPC's Administrative Committee, in June 2023, to establish the third seat of the UPC's central division in Milan. This seat replaces that previously assigned to London prior to the UK leaving the UPC system.  The other seats of the central division are Paris and Munich. The Milan seat is expected to start accepting cases within a year of the June 2023 announcement from the Administrative Committee.

What actions are dealt with by the UPC central division: The central division courts are those to which stand-alone revocation actions are brought and to which infringement actions initiated in the local divisions can also be transferred in certain circumstances, in particular where there are counterclaims for revocation. Infringement actions may also be brought direct in the central division if the parties agree. If there is already a revocation action pending at the central division when the infringement action is filed then the infringement action must be heard in the central division.

The work of the central division is divided according to the subject matter of the patent in dispute based on IPC classifications.

• Milan: Under the UPCA, London had originally been assigned one of the central division seats and was to have been assigned cases on patents involving human necessities (A) and pharmaceuticals/chemistry including genetic engineering and metallurgy (International Patent Classification of WIPO sections (A) and (C)). However, once London left the UPCA, these needed to be reassigned and a third seat reallocated. This third seat has now been formally allocated to Milan, following the amendment of the UPCA (see here).
  • Milan will handle cases involving patent in IPC class (A), but not those involving supplementary protection certificates (SPCs) which will be dealt with by Paris.
  • Due to the late allocation of this seat to Milan, the Paris seat is handling all IPC (A) cases until the Milan seat commences receiving cases (see below).
• Munich: The Administrative Committee's announcement of June 2023 also designated the Munich seat of the central division as handling patents in IPC class (C) (some pharmaceuticals including patents relating to peptides and nucleic acids and also genetic engineering). This was in addition to the responsibilities it already had, to hear cases relating to patents in IPC class F (concerning mechanical engineering, lighting, heating, weapons and blasting).
• Paris: The June 2023 announcement confirmed that the Paris seat of the central division will hear all cases involving patents in IPC sections (B), (D), (E), (G) and (H), as well as all cases involving patent in classes (A) or (C) with SPCs – and, while the Milan court readies itself, all matters involving patents in class (A) more generally.

Central division judges: Each central division seat has a panel of three judges – two legally qualified judges and one technically qualified judge (TQJ). The latter is present at all times, unlike the local division where TQJs may or may not be appointed to any panel for a particular case. A pool of specific (named) legally qualified judges will be appointed to the Milan seat of the central division, as they have to the Paris and Munich seat (see details of those and lists of the TQJs available, plus other information on judges and the structure of the UPC here, on our UPC & UP Hub)

The UPC has confirmed where to start a revocation action where patents have more than one classification: The UPC's Paris central division seat court has already transferred a pair of actions for revocation (brought by Astellas (cases UPC_CFI 75/2023 and 80/2023)) to the Munich central division court, as in both cases the first IPC classification of the patent was (C), although there were also (A) classifications in the list. The court applied RoP 17.3 which deals with allocation by classification and provides:

• For a single patent with a single classification – this should be assigned to the appropriate court dealing with that classification;
• For actions involving more than one patent and a majority of the patents have a single classification appropriate to one particular seat - the UPC Registry should allocate that action to that seat
• Where the action involves more than one patent and no majority of the patents have a single classification corresponding the one of the seats of the central division - the Registry will assign the case to the central division seat corresponding to the first listed classification on the first patent listed on the statement of claim
• Where there is one patent in an action which has more than one classification listed - the Registry shall assign it to the seat appropriate to the first classification

This last option applied in the Astellas cases; the patents both has a (C) classification first listed and so were transferred to the Munich central division court.

Fore more on the UPC and unitary patent see our dedicated UPC & UP Hub and our regular UPC & UP posts on our IP Notes blog.