Innovation Law Insights

Artificial Intelligence

The evolution of Legal AI Agents and market maturity

The legal technology landscape is witnessing a remarkable transformation, with AI agents emerging as the dominant force shaping the industry’s future. This trend has become increasingly evident through recent market developments, where we’re seeing a steady stream of announcements introducing new agent-based features and solutions.

These observations were strongly reinforced during my participation at the 2024 Legal Geek Conference in London, which once again proved its position as the premier global gathering for legal innovation. It draws an impressive array of professionals, providers, and thought leaders from across the legal technology landscape.

The rise of AI agents has been nothing short of remarkable, marking a significant evolution from the initial generative AI wave. The conference’s exhibit hall was a compelling showcase of this trend, with numerous vendors presenting sophisticated agent-based solutions. But, much like the early debates surrounding generative AI, the industry is grappling with defining what truly constitutes an “agent” and which solutions genuinely qualify as agentic AI.

The market dynamics have matured since the initial AI proof-of-concept phase. Organizations are moving beyond the “AI FOMO” (Fear of Missing Out) that characterized early adoption patterns. Instead, we’re observing a strategic pivot toward implementations that deliver demonstrable ROI. This shift reflects a more sophisticated understanding of AI’s role in legal operations, with corporations increasingly demanding solutions that offer tangible efficiency gains and measurable business impact.

Legal tech investment patterns mirror this maturation, with funding now flowing predominantly to solutions that demonstrate clear value propositions.

At DLA Piper, we’re actively guiding corporations through this evolved landscape. Our approach focuses on:

• Strategic assessment of AI agent implementation opportunities, verifying whether a solution effectively addresses a specific problem and can be deployed efficiently, considering the unique workflows involved.
• Developing robust ROI frameworks for legal technology adoption, setting measurable KPIs specific to the legal and compliance departments’ operations.
• Managing compliance and risk in AI deployment, ensuring the solutions are aligned with the new requirements introduced by the EU AI Act, GDPR and wider EU Digital Strategy.

The future of legal tech clearly lies in purposeful innovation rather than technology for technology’s sake. As the market continues to mature, the focus will increasingly shift toward solutions that deliver measurable improvements in legal service delivery while maintaining the highest standards of professional practice.

For corporations looking to explore this evolving landscape, our team of lawyers and developers at DLA Piper in Italy is able to provide strategic guidance and practical support in identifying and implementing the right solutions for your specific needs. Connect with us to learn more about how we can help plan and execute your legal innovation journey.

Author: Tommaso Ricci

 

Legal Design

Trick #3: EMPATHIZE – The first step towards design thinking

What does "empathize" mean?

Empathize means making legal solutions more human-centred by truly understanding users’ experiences and pain points. By empathizing with our audience, we can better tailor our solutions to address their unique needs.

Why empathy?

It allows us to step into the shoes of our users, gaining insight into their needs, concerns, and frustrations.

How to empathize with users?

• Listen actively and observe behaviour – Engage fully, focusing on both spoken words and non-verbal cues.
• Ask open-ended questions – Encourage users to share in-depth insights and personal experiences though surveys and interviews.
• Map user journeys – Visualize key touchpoints and pain points in users’ interactions with legal processes.
• Reflect and validate – Develop solutions that truly align with user needs, reduce friction, and enhance satisfaction.

What to do in practice?

Identify "personas" by creating detailed profiles of your model user. This involves exploring elements like name, age, family, profession, hobbies, and habits. Through this, you gain a clear picture of the persona’s needs, behaviours and preferences.

Did you know?

Personas aren’t always based on real individuals – they can be creatively imagined by the design thinker to represent typical users.

Stay tuned for Trick #4, where we will explore how to identify and define key pain points!

Author: Deborah Paracchini

 

Intellectual Property

Oran Sandals by Hermès: Trademark saved from revocation in the EU

With the decision of 6 September 2024, in proceedings R 192/2024-2, the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) overturned the previous decision of the Cancellation Division. It recognised that the use of the trademark consisting of the shape of a sandal vamp of Hermès’ famous "Oran" sandal can be considered distinctive.

The case originated in 2016, with the application for registration of the figurative trademark "H" (present on the sandal vamp of Hermès' "Oran" sandals) filed by the famous Parisian brand, for products in Class 25. In 2022, a revocation request was filed on the grounds that the mark hadn't been used effectively for an uninterrupted period of five years (Article 58, par. 1, letter (a), EUTMR).

With its decision of 28 November 2023, the Cancellation Division accepted the revocation request. It held that using the mark as the shape of a sandal vamp could not be considered effective trademark use.

Hermès appealed this decision on 24 January 2024, requesting its annulment. In its brief, Hermès argued that, under Article 4 EUTMR, an EU trademark can consist of any sign, including three-dimensional shapes, provided that it can distinguish the goods or services of one undertaking from those of another, and that there's no requirement that a mark must be affixed to a product to constitute use.

In its decision, the Second Board of Appeal specified that in revocation proceedings, a certain degree of distinctiveness of the contested mark must be acknowledged. Even if the contested mark were considered to lack a high degree of distinctiveness, a minimum distinctive character should nonetheless be recognized by virtue of its registration.

The Second Board of Appeal observed that, although a mark can be used as a non-distinctive element of the products for which it is registered (in this case, items such as shoes and fashion accessories), this is not the case here, given the scant evidence provided by the party requesting the revocation of the Hermès trademark.

Conversely, Hermès submitted extensive evidence showing that, in the relevant market sector, it's customary to include trademarks in the shape of sandal uppers and that most leading sandal manufacturers follow this widespread market practice. The various pieces of evidence presented by Hermès, including a market survey in France, showed that consumers recognize the commercial origin of a product by the shape of the sandal vamp.

The Second Board of Appeal also held that Hermès’ use of the figurative "H" trademark for the scarf ring constitutes use as a distinctive mark. So the letter "H," used in this case for the scarf ring, is capable of identifying the product’s origin, enabling consumers to associate it with Hermès. Regarding t-shirts and sweatshirts, it was noted that despite slight visual differences in the sign's representation, the examples provided by Hermès demonstrate the use of the sign as registered for t-shirts and sweatshirts in Class 25. However, the Board excluded any use of the contested mark in relation to hats and other items in Class 25 (eg boots, slippers) for which Hermès had not provided any evidence of use.

The Second Board of Appeal concluded that Hermès’ contested mark had been used as a trademark for footwear, and in a form that doesn't alter its distinctive character for the following goods in Class 25: t-shirts, sweatshirts, and scarf rings. The Board then referred the case back to the Cancellation Division for further examination concerning the criteria for use of the contested mark, which had not been analysed in the decision.

Author: Carolina Battistella

UPC: The Nanotech saga continues

On 17 October, the Central Division in Munich gave its decision in the settlement of proceedings for a declaration of invalidity of a patent relating to chemical compounds and methods for the detection of analytes. This decision is part of a broader context in which the parties were involved in other proceedings before the UPC, some of which we've covered in our column.

The first issue brought before the court concerned the jurisdiction of the UPC over the validity of the German portion of the patent, which had already been reviewed by the German Federal Court, as a result of an action initiated by the German subsidiary – part of the same group as the plaintiff – before the start of the litigation and was subsequently appealed. In the defendant's view, this lis pendens would have at least justified a stay of the proceedings before the UPC, limited to the German portion of the patent, due to the connection between the cases.

Even though the defendant waived this objection in the course of the proceedings and the parties had unanimously requested a ruling by the Central Division also on the German portion of the patent, the court ruled on the issue of its own motion in the light of the Brussels I bis Regulation (Regulation EU 1215/2012). The Central Division, relying on certain case law, excluded the application of Articles 29 and 30 of the aforementioned Regulation. The articles allow the stay of proceedings when several related cases are pending before courts of different member states. The Central Division didn't consider the requirement of identity between the parties, here considered to be separate legal entities sharing only the same parent company, to be fulfilled. Further arguments led the Central Division to reject the application for a stay, including the advanced stage of the proceedings before the Central Division, the long time required to resolve the pending appeal proceedings in Germany and, lastly, the fact that the case before the national court concerns only the German portion of the patent.

Turning now to the merits of the decision, the invalidity action brought by the plaintiff is based on the alleged lack of novelty and inventive step of the disputed patent, effective in Germany, France and the Netherlands, as well as on the alleged insufficiency of disclosure. With reference to the patentability requirements, the Central Division upheld the plaintiff's application, considering the invention in its entirety (and this is an element emphasized by the judges) already disclosed before the filing of the application. The Central Division also emphasized – on the basis of previous decisions – the importance of the interpretation of the claims to determine the scope of protection conferred by the patent, pointing out that it's necessary to consider the claim as a whole, not limiting it to its literal wording, but having regard to any explanatory aid, including drawings and descriptions, without this entailing an undue extension of the scope of protection of the patent. Such an approach, the court pointed out, is aimed at balancing the interest of the patent holder with the equally important need for legal certainty for third parties.

Nor did the version of the patent as amended by the defendant following the filing of the first "auxiliary request" convince the court, which held that the invention, as amended, still lacked inventive step. As for the patent holder's subsequent auxiliary request, it was deemed inadmissible because it was submitted out of time. The court, pointing out that a further request should and could have been filed earlier by the defendant, referred to the UPC's so-called "front-loaded" system, under which the parties have to present their defences as soon as possible, also to ensure compliance with the principle of adversarial proceedings.

The decision, which invalidated the patent in its entirety, can be appealed.

Author: Laura Gastaldi

The future of intellectual property in the metaverse: Analysis by EUIPO

In October, EUIPO published an interesting report in collaboration with the United Nations Interregional Crime and Justice Research Institute (UNICRI). The study arises from the pressing need to raise awareness among intellectual property rights holders, industry professionals and institutions regarding the impact of the metaverse on IP rights violations. Just think of virtual fashion items, various forms of digital art and NFTs as representations of property to grasp the enormous intersection between IP and the metaverse.

As highlighted by EUIPO Executive Director João Negrão in the preface to the study, illegal activities and crimes related to the violation of intellectual property rights are increasingly recognized not only as a threat to innovation but also to public safety. This is further evidenced, as Negrão points out, by the inclusion of certain intellectual property offenses within the EMPACT (European Multidisciplinary Platform Against Criminal Threats).

The research methodology used for the report was primarily documentary, although expert interviews and workshop participation were also conducted, highlighting how intellectual property plays a central role in shaping interactions and defining experiences within the metaverse. From a strictly forensic standpoint, this needs a swift update of existing tools, specifically designed to address the complexities of virtual interactions, such as blockchain transaction analysis and collection of evidence.

To meet these challenges, the researchers behind the report suggest the use of "Metaverse Intelligence," a complementary investigative framework focused on analyzing metadata, virtual identities, interactions and economies.

As pointed out by professionals in the field, the biggest challenge for Metaverse Intelligence lies in the transnational nature of the violations, which often complicates the identification of the jurisdiction and of the applicable law.

Author: Noemi Canova

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Innovation Law Insights is compiled by DLA Piper lawyers, coordinated by Edoardo Bardelli, Carolina Battistella, Carlotta Busani, Giorgia Carneri, Noemi Canova, Gabriele Cattaneo, Maria Rita Cormaci, Camila Crisci, Cristina Criscuoli, Tamara D’Angeli, Chiara D’Onofrio, Federico Maria Di Vizio, Nadia Feola, Laura Gastaldi, Vincenzo Giuffré, Nicola Landolfi, Giacomo Lusardi, Valentina Mazza, Lara Mastrangelo, Maria Chiara Meneghetti, Deborah Paracchini, Maria Vittoria Pessina, Marianna Riedo, Tommaso Ricci, Rebecca Rossi, Roxana Smeria, Massimiliano Tiberio, Federico Toscani,  Federico Toscani, Giulia Zappaterra.

Articles concerning Telecommunications are curated by Massimo D’Andrea, Flaminia Perna and Matilde Losa.

For further information on the topics covered, please contact the partners Giulio Coraggio, Marco de Morpurgo, Gualtiero Dragotti, Alessandro Ferrari, Roberto Valenti, Elena Varese, Alessandro Boso Caretta, Ginevra Righini.

Learn about Prisca AI Compliance, the legal tech tool developed by DLA Piper to assess the maturity of AI systems against key regulations and technical standards here.

You can learn more about “Transfer”, the legal tech tool developed by DLA Piper to support companies in evaluating data transfers out of the EEA (TIA) here, and check out a DLA Piper publication outlining Gambling regulation here, as well as a report analyzing key legal issues arising from the metaverse qui, and a comparative guide to regulations on lootboxes here.

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