The third section of the Central Division of the Unified Patent Court (TUB)

in Milan, Italy.

The Italian office of the Central Division of the Unified Patent Court, Tribunale Unificato dei Brevetti (TUB) has been active in Milan since June 26^th, 2024, alongside the Local Division of the TUB, which has already been operational in Milan, Italy, since June 1^st, 2023.  

As is known, the new judicial system provides uniform protection to the European patent provided for by the Munich Convention of October 5^th, 1973 (EPC) and to the new European patent with unitary effect (“unitary patent”).

The European patent issued by the European Patent Office in Munich (EPO) allows you to obtain, with a single application, a “bundle of national patents” and is effective only in the designated States, once the patent has been “nationalized” in each of them (with the relevant translation).

The European patent with unitary effect, also issued by the EPO, allows, instead, to obtain a single title valid in the 18 EU countries that have ratified the Agreement on the TUB (Belgium, Bulgaria, Denmark, Germany, Estonia, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Austria, Portugal, Slovenia, Finland, Sweden and, from September 1^st, 2024, Romania).

It should be considered that validating the European patent even in only the 4 most important EU countries would involve greater costs than the European patent with unitary effect (valid in 18 countries).

The project is for a unitary European future, both in terms of Intellectual Property titles and in terms of a single protection system with European Courts.

A 7-year transitional period began on June 1^st, 2023, extendable for a further 7 years, during which a “shared competence” of the TUB and the national Courts is foreseen on traditional European patents (without “unitary effect”).

The owners of such patents and their counterparties may choose to enforce such patents before the TUB (with a single action) or before national courts.

In the latter case, they may submit a so-called opt-out request to exclude their patent from the jurisdiction of the TUB, provided that there are no proceedings relating to that patent pending before that Court.

An opt-out may also be revoked (finally, without further possibility of further opt-out) only if no action relating to the patent has yet been initiated before a national court.

The opt-out is not, instead, possible for European Patents with unitary effects.

Upon expiry of the transitional period, the TUB will also have exclusive jurisdiction over traditional European patents.

1. Jurisdiction and competence of the TUB.

The Milan section of the Central Division of the TUB has jurisdiction to rule on the validity of unitary patents and non-opted-out European patents together with the Paris and Munich sections, operational from June 1^st, 2023.

In particular, the Milan section will be competent to decide on disputes relating to patents of Section A IPC, concerning the category of “Human Necessities” (including textiles / fashion and food processes, as well as the pharmaceutical products sector) with the exclusion of supplementary protection certificates (titles that allow the extension of the duration of a patent relating to a specific medicinal or phytosanitary product).

These sectors represent approximately 40% of the proceedings currently devolved to the Central Division of Paris.

2. Procedures in front of the TUB.

The TUB operates in three languages ​​(English, French and German; Local Divisions may also use the official language of the country in which the division is located) and is made up of professional judges from various EU Member States, supported by technical judges, experts in the various technical and scientific areas relating to patents.

Legal assistance and representation before the TUB is reserved not only to lawyers, but also to industrial property consultants (patent section).

The latter must be in possession of the European Patent Litigator Certificate (EPLC).

The jurisdictional procedure is governed by art. 41 of the TUB agreement and includes three phases:

1. Exchange of briefs between the parties (filing of the defendant’s response within three months and one month to raise preliminary objections);
2. Instruction of the case by the judge reporting the proceedings;
3. Oral discussion of the case before the Panel of Judges and decision within six weeks of the hearing.

The duration of the proceedings is estimated at 12-14 months to obtain a decision, which may be appealed within 2 months of notification of the same.

The decision in the appeal stage must be based on the facts already presented in the first instance and no further level, subsequent to the appeal, is envisaged.

3. Costs of the proceeding.

The justice contribution to start a proceeding before the TUB varies depending on the complexity and value of the case (from Euro 12.000 to Euro 20.000 for higher value cases).

The costs of the trial can vary, presumably, between Euro 50.000 and Euro 200.000 (for the most complex cases).

4. Litigation Growth Prospects.

The number of proceedings at the Local Division of the TUB in Milan, which deals with infringement actions, counterclaims for invalidity and precautionary proceedings, is constantly increasing.

The opening of the new Central Division in Milan offers companies the opportunity to enforce their patents relating to the category of “Human Necessities” in a competent and specialized venue and an overall value for the related industries has been estimated at approximately 350 million Euros per year.