As of 1 May 2023, there has been a substantial change in the manner in which the compliance period for UK divisional patent applications is determined.
The compliance period defines the deadline for putting a UK patent application in order for allowance – and if a patent application is not in order for allowance by the end of the compliance period, then it is treated as having been refused. In practice, this can result in patent examiners issuing examination reports in a rapid fire manner as the end of the compliance period approaches and applicants needing to file equally rapid fire responses in order to get an application over the line.
The compliance period for an application is calculated as the later of:
(i) four years and six months calculated from the earliest priority date of the application; or (ii) twelve months from the date of the first substantive examination report (for the patent family of that patent application). This period can be extended by two months as of right (upon payment of a small fee), but any further extensions to the compliance period are discretionary.
The compliance period also sets the deadline for filing divisional applications. This deadline for divisional applications is three months before the end of the compliance period – and extending the compliance period also extends this divisional deadline.
Historically, the initial compliance deadline for a divisional application has been set as the compliance period of the parent application from which that divisional is derived. So, if a compliance period was to be extended for a parent application, then any later filed divisional application would commence with this extended compliance period. Therefore, it has been possible to: extend the compliance period of a parent application by two months, file a divisional application with an initial compliance period that is this extended parent compliance period; and then extend the compliance period for that divisional application by another two months. In effect, it has previously been possible to obtain multiple as-of-right extensions to a compliance period by filing divisional applications. This possibility has now been closed.
Specifically, as of 1 May 2023, the initial compliance period deadline for a divisional application will be the same as the un-extended compliance period of the parent application.
The major effect of this change is that more time pressure will be placed on applicants that file divisional applications towards the end of the compliance period. And it will not be possible to file numerous divisional applications using a cascading strategy. Potentially problematically, this could result in applicants needing to file numerous divisional applications before a resolution has been reached on a parent application. The practical effect of this change is that for applications that disclose multiple inventions a suitable divisional strategy should be considered well ahead of the compliance period to ensure that there is enough time to file these divisional applications and also enough time to progress these divisional applications to grant.
Please contact Mathys & Squire if you wish to discuss this change in more detail with a professional representative.
The UK Intellectual Property Office (IPO) has released a report outlining statistics regarding patents, trade marks, designs, and hearings for 2022. The data shows an increase in patent applications during the period 2021-2022, while trade mark and design applications experienced a decline.
Patent applications and publications increase
The data highlights a 3.4% increase in patent applications, to 19,486 overall, with a slight (0.6%) rise in domestic applications and a notable 23% increase in Patent Cooperation Treaty (PCT) applications. Following a recent trend of declining patent applications through the period of the COVID-19 pandemic, this upturn is consistent with other major patent applicant countries such as France, Germany, and Japan. Moreover, while patent publications climbed by 4.3% to 11,790, there was a 2.9% decrease in patent grants, to 10,578. Despite this decline, the number was still the second highest annual number of patent grants the IPO has ever observed. The IPO has outlined that this is due to an internal initiative to reduce the backlog of patent cases under examination. It will be interesting to see whether this pattern continues.
Decline in trade mark applications and registrations
In contrast to the record-high number of applications witnessed in 2021, trade mark applications saw a 19.2% decrease in 2022, to 158,821. Furthermore, the number of trade mark registrations declined by 3.5%, to 163,104. This downward trend can be attributed to a steadying of application numbers following the surge caused by the UK’s departure from the European Union. This is the first year that the IPO has seen a higher number of registrations than applications, as a result of processing the backlog of applications from the previous year’s surge. China and the USA led with the highest numbers of non-UK based applications, however, both saw a significant decrease compared to 2021.
More trade mark oppositions filed
The IPO also plays a role in the resolution of intellectual property disputes by conducting hearings and overseeing tribunals, with trade marks constituting a majority of hearing activities. There was a substantial rise in trade mark oppositions filed, increasing from 8,080 in 2021 to 8,827 in 2022.
Rise in design registrations and decrease in applications
There has been a dramatic 1114.9% increase in design applications between 2015 and 2021. Although there was a 6.7% dip in design applications from 2021 to 2022, to 67,315, a substantial 16.9% increase in design registrations was recorded, to 70,098. Similar to trade marks, a decline in international applications was noted.
Looking forward
The IPO’s comprehensive report for 2022 offers valuable insights into the dynamic trends of patent, trade mark, design, and hearing activities. The IP landscape has experienced a lot of change due to Brexit and the COVID-19 pandemic, the effects of which we are still seeing, with the initial surge and now decline of trade mark and design applications, and the increase in patent applications after the decrease due to the pandemic. The IPO’s new initiative to reduce the backlog of cases is also showing a notable improvement in the amount of grants and registrations, and it will be interesting to see how these trends develop.
The recent decision T 1634/17 confirms the strict approach taken by the EPO when considering whether an oral presentation anticipates a subsequently filed patent application, and the high burden of proof on an opponent in EPO opposition proceedings who is seeking to invalidate a patent on the basis of such an oral disclosure.
European patent no. 2550363 was granted to Regeneron Pharmaceuticals Inc, with claims relating to a protein ADAM6 and its role in fertility in male mice. The patent was opposed by Kymab, and at first instance the Opposition Division (OD) agreed with Kymab that the claims as granted lacked inventive step based on a presentation given by one of the inventors, Dr Murphy, more than a year before the earliest priority date of the patent. The key documents provided by Kymab as evidence of the presentation were document 11 (D11), and a related document referred to as D11’.
D11 was a set of PowerPoint slides said by Dr Murphy to have been shown during the presentation. Dr Murphy acknowledged that neither hard copies nor electronic copies of the slides were distributed at the presentation. The OD held that D11 was not state of the art because it was not “finally proven beyond reasonable doubt” that the set of slides filed as D11 was the actual set of slides shown at the presentation given by Dr Murphy.
D11’ was a summary of what was said to have been learned from the presentation, compiled by Professor Allan Bradley, founder of Kymab and an attendee at the presentation. Professor Bradley circulated the summary amongst his colleagues a few days after the presentation. The OD held that D11’ contained “features of D11 which had been proven to be publicly disclosed” and thus could form state of the art relevant to novelty and/or inventive step.
Regeneron submitted in appeal proceedings that the OD was incorrect in its assessment of what had been disclosed, and that neither D11 or D11’ should form state of the art. The Board of Appeal agreed, considering in particular that the relevant question was what was conveyed to the public, not just what was presented or shown.
The Board agreed with the OD that D11 was not state of the art, referring to the earlier decision T 1212/97, which states that a lecture cannot be evidenced by the lecturer alone, as they hold a different position to a member of the audience. The Board noted that according to Dr Murphy the 58 slides reproduced in D11 had been shown in less than an hour, and the Board commented that the manner or speed of presentation may affect the comprehensibility of a lecture and the amount of material/information covered by the lecture may be another factor to affect said comprehensibility.
Upon considering the evidence on file, including a number of declarations from other attendees of the presentation, the Board also held that D11’, or any other documents on file, did not convincingly show beyond reasonable doubt what was actually disclosed because they were not contemporary written notes taken during Dr Murphy’s presentation. For example, it was noted that D11’ had been produced after several subsequent conversations, discussions and meetings between Professor Bradley, Dr Murphy, and/or other attendees of the presentation, and thus it could not be ruled out that it may have contained additional information beyond that actually conveyed by Dr Murphy during the presentation itself.
As D11’ was not contemporaneous evidence of what Dr Murphy’s presentation disclosed to the public, and the slides of D11 were also not considered state of the art, neither of these documents could be taken into account for the assessment of novelty and/or inventive step of the claim requests. The Board overturned the decision of the OD, the opposition was rejected, and the patent upheld as granted.
This decision is a useful reminder of the high standard that the EPO requires to be met in order to establish what was actually disclosed in an oral presentation. Evidence from the presenter alone is unlikely to be enough, and supporting evidence from attendees may need to include contemporary notes actually taken by the attendees during the presentation.
Twitter has recently announced its decision to undergo a complete rebranding, changing its name to ‘X’ and abandoning the iconic blue bird that has been associated with the brand for years. This approach comes in a rapidly changing digital world in which companies are always under pressure to reinvent themselves. While rebranding may be a smart step for staying current and establishing a brand’s identity, it also has inherent risks, particularly when historic trade marks are abandoned.
The power of iconic trade marks
Twitter’s iconic blue bird logo and its name hold immense power in the consumer psyche. Twitter has grown to become one of the most important platforms for real-time information, communication, and social networking, as well as people incorporating Twitter language into their everyday vocabulary and using it as a verb ‘tweeting.’ By deciding to rebrand and abandon the original mark, Twitter runs the risk of losing its hard-earned brand equity and recognition. Twitter risks losing that instant association by switching to ‘X’ and it may find it difficult to preserve its identity in the minds of users.
Trade mark dilution and public perception
Twitter has developed a significant global user base over the years, and the company’s choice to abandon its distinctive mark may open a legal Pandora’s box. Trade marks are essential assets for any company, safeguarding its unique identity and preventing unauthorised use by competitors. By abandoning its well-known mark, Twitter exposes itself to possible trade mark dilution due to changes and actions taken by the company which can lead to a loss of recognition and identification among consumers. With this, the brand’s value and uniqueness may be eroded or muddled over time and diluting the strong recognition people may have with the brand.
A rebranding can be successful when it can really capture the essence of the new brand and resonate with consumers, and Twitter’s rebrand implies a fresh start and an opportunity to redefine its image. This strategic shift indicates not just the company’s desire to attract a larger user base, but also its willingness to adapt to changing trends and user preferences. The difficulty here is to ensure that the new identity meets consumer expectations while keeping components of the previous brand’s familiarity.
Trade mark challenges
‘X’ is widely used across several industries and Twitter may face legal challenges from companies that already have rights to the letter ‘X’; Twitter could have issues in defending the ‘X’ brand name in the future. The new name’s single-letter nature presents a unique problem. Single-letter trade marks, while possibly distinctive and bold, face inherent limitations in the scope of protection they can offer.
Obtaining trade mark rights, especially at a global scale, necessitates extensive clearance searching to avoid conflict and make sure the new name is available for use and registration as a trade mark, especially in this case as the single letter ‘X’ mark has been used across various industries, from technology to entertainment, and is very popular commercially which increases the risk of potential conflicts. There are also registrations obtained by companies that operate in similar industries to Elon Musk’s X Corp, such as Microsoft and Meta.
While the rebranding provides a new beginning, Twitter must also ensure that the new identity, ‘X’, stands out in the crowded digital marketplace. Distinctiveness is a key component of trade mark protection since it prevents confusion and dilution of a brand’s image. The challenge is to keep this distinctiveness while navigating the sea of existing ‘X’ trade marks. It is this sea of existing trade marks and complexity which highlight and necessitate the importance of trade mark searches and the downfalls of adopting a mark without carrying out appropriate checks.
Twitter’s original trade marks, including the phrase “Twitter” and its famous bird emblem, are well-protected and have a strong brand identity and reputation associated with them. This is due to their long history of use, global recognition, and distinctiveness. These trade marks demonstrate the need of not only obtaining protection but also consistently upholding the brand’s image to avoid dilution.
Conclusion
While rebranding can be a crucial step for businesses wanting to adapt to changing market dynamics in order to remain relevant, it is not without risks. Twitter’s plan to change its name to ‘X’ is undeniably a high-stakes gamble that could either redefine the company’s future or jeopardise its hard-earned brand value. Confusion, loss of identity, legal problems, reputation risks, and eventual dilution of brand value are among the risks of abandoning iconic trade marks.
The success of Twitter’s rebranding will be determined by how successfully the company communicates the rationale for the move, their ongoing goodwill, how it addresses any legal issues, and how well it maintains a smooth transition for users. Only time will tell whether ‘X’ can emerge as a stronger, more resilient brand.
In today’s rapidly evolving job market, the success of individuals and companies alike is heavily reliant on a skilled and adaptable workforce. With technological advancements, shifting industry landscapes, and global economic changes, it is crucial for young professionals to be adequately prepared for the challenges that lie ahead.
Enter Career Ready, a pioneering organisation that is reshaping the way students and graduates approach their career paths. Career Ready is a non-profit organisation dedicated to bridging the gap between education and employment. Founded with a vision to equip young individuals with the knowledge, skills, and confidence necessary to thrive in the professional world, the organisation has become a leading force in career-focused education and work-readiness training.
The core mission of Career Ready is to provide students with invaluable experiences, mentoring opportunities, and exposure to real-world work environments, enabling them to make informed career decisions and excel in their chosen fields. By partnering with educational institutions, businesses, and volunteers, Career Ready fosters a holistic approach to career development that goes beyond traditional academic learning.
Mathys & Squire is proud to partner with Career Ready to support the personal growth and development of students from across the UK. We provide internship opportunities and run training sessions for students interested in learning more about the IP profession. We are also part of a 12-month mentorship programme, in which our colleagues guide their mentees through the early stages of their career journeys. The aim of the experience is to expose these individuals to the working environment, giving them an insight into every facet of the Mathys & Squire business, and the working world.
Masterclasses and shadowing opportunities are present across all departments in an effort to expand the horizons of our interns. Different tasks and activities presented to them will allow our interns to engage with, and understand, the operations of a legal firm, whilst educating them on intellectual property and its importance in fostering innovation across every sector.
“Career Ready internships have proven to be an invaluable experience for both our firm and the talented young individuals we mentor. Through this transformative program, we witness the emergence of a new generation of professionals who possess not only technical expertise but also a deep understanding of the real-world challenges they’ll face in their careers. Investing in these young minds today ensures a brighter future for the entire industry, and that’s why Mathys & Squire is proud to partner with Career Ready.” – Caroline Warren, D&I Partner
We encourage our interns to explore every career path available to them and in turn nurture their personal growth and development.
“My experience at Mathys & Squire has been brilliant. I initially chose to do my internship here because, through my research, I learnt it is one of the best IP firms in the country, which really intrigued me as I’m really interested in IP law. The experience of learning and shadowing different departments was highly informative and a great way to learn why different departments are needed in a firm. The staff has been amazing and helpful as well!” – Britney, summer 2023 intern
“I chose a Career Ready internship to get an insight into the legal sector and experience different types of law. Additionally, I wanted to know the different pathways I could take to become a lawyer. This experience has helped me understand what an IP firm does and the various departments within the firm and what they do behind the scenes for their clients. Furthermore, the culture within the firm is quite diverse and inclusive and allows one to feel more welcomed and comfortable. It has been a very fun experience and probably the most insightful one into the legal sector thus far.” – Mariam, summer 2023 intern
The collaboration between Career Ready and Mathys & Squire exemplifies the power of investing in the workforce of tomorrow. By fostering a culture of learning, mentorship, and hands-on experience, we become instrumental in shaping a future where young professionals are equipped with the skills and confidence to overcome challenges and become innovators and champions in their chosen field.
The advent of social commerce has revolutionised the way we shop, blurring the lines between content creation, entertainment, and consumerism. The explosive growth of TikTok has attracted a reported 1.5 billion user base, which includes content creators, influencers, and entrepreneurs.
The platform’s ease of use and potential for viral success has led to a surge in product promotion and marketing campaigns. TikTok Shop, the retail arm of this social media giant, allows users to discover and buy products directly from the platform. With US$20 billion of expected sales this year alone, TikTok Shop has been hailed as a groundbreaking move in the world of social commerce, streamlining the shopping experience and capitalising on its massive user base.
While this seems like a promising integration of e-commerce and social media, it also brings to light a concerning issue – the proliferation of counterfeit products. It’s important to understand challenges TikTok Shop faces with counterfeits and its implications on intellectual property (IP) rights.
Recent reports have found more and more counterfeit products, ranging from clothing and accessories to gadgets and cosmetics, finding their way onto TikTok through various means. Sellers may use popular creators to endorse their knock-off products, capitalising on their wide reach and influencing power.
Others may subtly promote counterfeit goods through visually appealing and misleading videos, luring unsuspecting users into making purchases they may later regret. This movement has been coined ‘RepTok.’ Despite TikTok’s policies against users posting content featuring counterfeit goods, #RepTok, short for Replica-Tok, is thriving, with upwards of 120 million views on that hashtag alone.
These unauthorised copies of branded products cause harm to both consumers and legitimate brands. So, what are TikTok doing to tackle this?
In the fight against counterfeits, a spokesperson for TikTok advised that they have a dedicated team of IP professionals working with brands, as well as a dedicated IP Protection Centre platform for rights holders. Rights holders can use this platform to submit takedown complaints and track their progress. Merchants found to be selling counterfeit products or infringing IP rights will be penalised or permanently removed from the platform. Sellers may also be required to provide documentation, such as brand authorisation or proof of product authenticity, with respect to their product listings.
The issue of counterfeits on TikTok raises a pressing concern about IP rights. Rights holders should be aware of the risks faced and have a strategy in place to tackle infringement. A clear strategy may protect their brand value from potential dilution, assist in maintaining consumer confidence regarding safety regulations and quality standards and protect against potential loss of revenue, as well as reputational damage caused by inferior counterfeit products.
If you would like to discuss how to protect your brand’s online presence, please contact us to discuss how we may assist.
The UK Government set out plans for artificial intelligence (AI) regulation in a white paper released by the Department for Science, Innovation and Technology earlier this year. With the UK “frequently ranked third in the world” across several measures in the Global AI Index, the UK is positioning itself to become a global leader in AI technologies.
The paper sets out a regulatory framework aimed at driving growth, increasing public trust in AI, and strengthening the UK’s position as global leader in AI.
From the perspective of AI innovators including startups and SMEs, increased regulation might be unwelcome news at first, posing potential threats to their agility and freedom to innovate. However, the white paper recognises the need to take a pro-innovation approach that allows UK-based companies to remain competitive in a global market and incentivises overseas AI businesses to establish themselves in the UK.
The paper recognises that although the use and creation of AI is currently regulated through some existing frameworks, such as the MHRA guidance published in 2022 for AI and software used in medical devices, “AI risks arise across, or in the gaps between, existing regulatory remits.”
In light of the pace at which AI technologies are evolving, the government is not yet proposing new legislation, but is setting out a framework including various support and monitoring functions that in time are likely to be formalised.
Although light on detail at this stage, the proposed framework includes support such as AI testbeds and sandboxes to assist innovators in getting products to market and navigating the regulatory ecosystem, targeted at startups and SMEs in particular. This is in addition to existing tax relief schemes and other support proposed in the UK Government’s digital strategy paper last year.
The pilot sandbox scheme will initially focus on a single industry sector where there is a “high degree of AI investment (…) and appetite for improved collaboration between regulators.” The pilot industry sector has not yet been named, but sectors such as healthcare, fin-tech and automotive seem to be natural candidates, and it will be interesting to see where this initiative is rolled out first.
Although this paper does not directly deal with intellectual property rights for AI technologies, it emphasises that blanket rules will not be made for specific technologies, sectors or applications of AI. Instead, regulation will focus on “the use of AI rather than the technology itself.” Separate guidance is due to be released this summer from the UKIPO regarding the interaction between copyright and generative AI.
Indeed, the proposals and principles set out in this white paper are likely to have wider implications on AI patenting activity. For example, new regulation may present opportunities to solve new problems in innovative technical ways, for example relating to security, safety and explainability.
In addition, through requirements for greater accountability and transparency, we may see more innovators looking to patent their AI technologies if relying on closed-model software or trade secrets/know-how becomes less viable in this field.
Overall, the white paper appears to be positive news for AI innovators and is unlikely to hinder AI patenting activity in the foreseeable future. We look forward to developments in this area, and in particular to how the UK’s approach will align with the more developed EU AI Act proposal.
The UK Government is fulfilling its commitment to lead the way in nuclear technologies, with the Department for Energy Security and Net Zero (DESNZ) declaring the establishment of Great British Nuclear (GBN).
GBN to act as the driving force for the UK’s nuclear power promises
GBN will be dedicated to accelerating the expansion of the UK’s nuclear power, which will in turn diminish reliance on unpredictable fossil fuel imports, enhance energy security, and provide more cost-effective power solutions. It is projected that the nuclear industry will add approximately £6 billion to the UK economy.
The government has ambitions to generate up to 25% of the UK’s electricity through domestically produced nuclear energy by 2050, aiming to secure one of the most affordable wholesale electricity rates in Europe. Furthermore, this initiative will contribute to job creation across the country.
The UK Government also reinforced its commitment to nuclear power mega projects, highlighting that GBN will be working with Hinkley Point C and Sizewell C to assess the prospective contribution of additional large gigawatt-scale nuclear power plants in the UK’s energy portfolio.
Small modular reactor (SMR) competition kickstarted
Alongside the launch of GBN, the UK Government has launched an SMR competition, which will give those who enter the chance to obtain funding for their products. As SMRs are smaller than conventional reactors, they can be created in factories which may lead to the transformation of power stations, as the construction process will be more cost-effective and speedier.
GBN will evaluate the technologies submitted to the competition and will then engage in comprehensive discussions with the companies that meet the criteria as part of an ‘Invitation to Negotiate’ phase. The final selection will take place in the third quarter of this year.
Grant funding package of up to £157 million announced
In addition to the launch of GBR and the SMR technology competition, the UK Government announced various funding initiatives related to boosting the UK’s nuclear industry.
£77.1 million has been pledged towards funding advanced nuclear business development in the UK, as well as to aid with entering advanced nuclear designs in the UK’s regulation.
A further £58 million has been allocated towards the development and design of an advanced modular reactor (AMR) and next generation fuel. AMRs, which operate at higher temperatures than SMRs, have the potential to supply high temperature heat for hydrogen production and other industrial applications in addition to nuclear power. Funding towards the winning projects included £22.5 million to Ultra Safe Nuclear Corporation UK based in Warrington, £15 million to National Nuclear laboratory in Warrington, and £16 million to National Nuclear Laboratory in Preston.
The Nuclear Fuel Fund will be providing £22.3 million to fuel eight projects, with Westinghouse Springfields nuclear fuel plant in Preston, Urenco UK in Capenhurst Chester, Nuclear Transport Solutions, and MoltexDLEX receiving funding.
Takeaways
The establishment of GBN and the grant funding package heralds a transformative phase for nuclear development in the UK, facilitating a rapid and substantial program to bolster the UK’s energy security, generate employment opportunities nationwide, and accelerate progress towards a net-zero future. The focus on SMR technology as well as nuclear power mega projects is expected to lead to the UK Government making major investments in both the public and private sectors, resulting in significant economic development.
Videos published on the internet are an increasingly common source of technical information and are used by companies in the same way that marketing literature, user manuals, and educational content have been for some time.
The EPO’s register, and the manner in which evidence is submitted to the EPO, is generally not capable of either receiving video evidence other than by means of a URL.
If decisions of the EPO are to be subject to proper review on appeal, or are to be made properly available to the public, then this problem needs to be solved. The recent update to the EPO Guidelines went some way to address this issue for applications under Examination, but the question of how to deal with it in EPO Oppositions seems to remain open.
The 2023 update to the Guidelines (B-X-11.6 and G-VII-7.5.6) was related to a decision of a Technical Board of Appeal of the EPO in T 3000/19. In that case, the evidence cited by the Examining Division of the EPO in refusing an application was an internet video. The Examining Division cited the URL, gave a screenshot, and quoted some text from the video. They also cited certain video frames by reference to their time stamps. By the time of the appeal, the video in question was no longer available on the internet.
The Board found that the material available on the file “does not provide sufficient evidence to allow the Board to make its own assessment of the relevant evidence.” In explaining that this was unsatisfactory, the Board set out the requirements which should apply to such evidence by reference to the Guidelines of the Committee of Ministers to member states on electronic evidence in civil and administrative proceedings, a publication of the European Commission.
The Board commented that, such evidence “should be collected in an appropriate and secure manner, and submitted to courts using reliable services such as trust services” and using procedures established by member states for the secure seizure and collection of digital evidence.” They also made reference to the need to store such video evidence with standardised metadata and evidence demonstrating when and how it was made available to the public.
Parties wishing to rely on video evidence obtained from the internet, for example in Opposition Proceedings, clearly need to address these issues but the Guidelines do not say how. Opponents should consider creating a secure and verifiable archive of the evidence provided by an internet video disclosure.
They should also ensure that they have some means of verifying that the content of their archive matches the content of the internet video disclosure in case it is later changed or removed from the internet altogether.
According to an announcement this week from the Italian Ministry of Foreign Affairs, agreement has officially been reached to situate a third branch of the Unified Patent Court (UPC) Central Division in Milan. The Milan branch of the Central Division is expected to open by June 2024. This will supplement the two branches in Paris and Munich which opened on 1 June 2023.
Originally the third branch of the UPC Central Division was destined for London, but after the UK withdrew from the UPC system in the wake of Brexit a decision was taken to relocate this branch. Milan has been rumoured to be the front-runner for several years, but negotiations seem to have been protracted. Notably, the announcement from the Italian government does not confirm which technical areas will fall within the competence of the new Milanese branch. London was originally to have competence for cases falling under IPC classifications A and C, relating broadly to chemistry, materials, life sciences and pharmaceuticals. For the time being these have been divided between Paris and Munich, and it is rumoured that those two branches might be seeking to hold on to some of that work even after Milan opens its doors. It is possible that discussions in that respect may be ongoing.
The Central Division of the UPC is the division with competence by default for actions concerning patent revocation and declarations of non-infringement. Other actions including infringement actions and applications for preliminary injunctions are, by default, the competence of the UPC’s Local and Regional Divisions. However, the Central Division has competence for these types of action in some circumstances, for example if the defendant is located in a country which is not party to the UPC Agreement, or if there is no local or regional division with competence to hear the case in the relevant UPC country/countries.
Each of Paris, Munich and Milan also already hosts a local division of the UPC, therefore the addition of a branch of the Central Division is likely to cement Milan’s position as a major venue for patent litigation under the new system.
