Milan: Where Life Sciences Patents Are Now in Fashion | Foley Hoag LLP
Key Takeaways:
- As of June 2024, Milan will begin hearing cases regarding patents classified in IPC Section (A), which includes pharmaceuticals.
- Milan will have competence to hear revocation actions, as well as actions for declaration of non-infringement.
- Drug patents with a Supplementary Protection Certificate (SPC) that are subject to the UPC Central Division will stay in Paris.
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The third seat of the Unified Patent Court’s (UPC) Central Division will open in Milan in June 2024. The Milan seat will have jurisdiction over patents classified in International Patent Classification Section (A) (“human necessities”), which includes most pharmaceuticals. These cases were originally intended to be heard by the Central Division seat in London; however, after the UK government announced its intention not to participate in the UPC (post-Brexit), these cases were temporarily allocated to Paris. The Hague and Milan were initially both in the running to replace London as the third seat of the Central Division; however, the Dutch government withdrew its candidacy in 2022.
Milan’s human necessities docket will include pharmaceuticals and medical devices, with the significant exception that jurisdiction over patents having Supplementary Protection Certificates (SPCs) will remain in Paris. In practice, since most marketed pharmaceuticals have SPCs, many critical UPC pharmaceutical cases subject to the Central Division will stay in Paris. While many life science companies have chosen to opt their patents out of the UPC system altogether for now, as comfort with the UPC system grows, the possibility of an SPC and its consequent jurisdictional effects should be considered when deciding whether to opt in or out for a particular patent.
The “human necessities” category also includes agriculture, food, home appliances, sports and, very appropriately for Milan, clothing. As a Central Division Seat, Milan will have competence to hear revocation actions, as well as actions for declaration of non-infringement. The Local and Regional Divisions have primary competence for infringement actions in the first instance.
