“UK solicitors can still be confident in their right to represent clients at the UPC”

In the dispute between Abbott and SiBio Biosciences over glucose monitoring devices, the UPC Court of Appeal had to decide whether the first-instance court was right to issue a PI for Ireland. Although Ireland has signed the UPC Agreement, it has not yet ratified it. This first requires the approval of the Irish people in a referendum, which the Irish government planned to hold in June but ultimately postponed.

“The decision causes uncertainty concerning the right to represent at the UPC”

Consequently, the panel headed by presiding judge Rian Kalden suspended the effect of the PI for Ireland because, the judges said, Ireland is not yet a contracting member state (case ID: UPC_CoA_388/2024). It is not known whether the judges also took into consideration what this could mean for the power of representation for Irish lawyers.

Article 48 (1) of the UPC Agreement states that “parties shall be represented by lawyers authorised to practise before a court of a Contracting Member State”.  The Court of Appeal’s decision has now caused uncertainty for Irish lawyers concerning their right to represent clients before the UPC.

The decision also affects lawyers from five other EU countries: Cyprus, the Czech Republic, Greece, Hungary and Slovakia have also signed the UPC Agreement but not yet ratified it.

Many UK solicitors affected

“Irish admission seemed a secure option as it wasn’t clear a referendum was required”

After Brexit, the so-called Irish route had become an important stepping stone for UK solicitors to play an active role in the UPC. When the British government announced the UK’s withdrawal from the UPC in 2020, many London patent litigators then successfully sought admission in Ireland. At that time, Irish admission seemed a secure option because it was not yet clear that Ireland would require a referendum to ratify the UPCA.

In the meantime, numerous UK patent firms have taken over UPC proceedings. Powell Gilbert, for example, is involved in several proceedings for AIM Sports, Edwards Lifesciences and AsusTech. Carpmaels & Ransford is conducting proceedings for Sanofi and Curio Bioscience. Bristows has also recently had its first UPC case.

Furthermore, UK solicitors from Allen & Overy, Bird & Bird, Herbert Smith Freehills, Freshfields Bruckhaus Deringer, Gowlings WLC, Pinsent Masons and Taylor Wessing also play a role in UPC proceedings as members of international teams.

Only a few London patent litigation teams such as Kirkland & Ellis do not conduct UPC proceedings and concentrate instead on the coordination of such cases.

Additionally, UK patent attorney firms such as Dehns, J.A. Kemp, Marks & Clerk and Potter Clarkson also have UPC cases. However, these do not need an Irish licence, as they can generally conduct proceedings at the UPC with an additional qualification. The Court of Appeal’s decision in Abbott vs SiBio therefore mainly affects UK solicitors.

All clear, or not?

The good news is that in addition to Article 48 of the UPCA, Rule 286 of the UPC Rules of Procedure also regulates the admission of lawyers to the UPC and its wording is more vague. The response from the UPC to an inquiry from JUVE Patent as to whether the Court of Appeal’s decision means the end for Irish lawyers at the UPC offered little clarification.

“The Unified Patent Court must respect and apply Union law”

A UPC spokesperson said, “Article 48(1) of the Agreement on a Unified Patent Court provides that parties shall be represented by lawyers authorised to practise before a court of a Contracting Member State. The Unified Patent Court must respect and apply Union law.”

They added, “Accordingly, Rule 286 of the Rules of Procedure provides that a lawyer within the meaning of Article 48(1) of the Agreement on a Unified Patent Court is a person who is authorised to pursue professional activities under a title referred to in Article 1 of Directive 98/5/EC of the European Parliament and of the Council to facilitate practice of the profession of lawyer on a permanent basis in a Member State other than that in which the qualification was obtained.”

Not the only route to admission

Alex Wilson of Powell Gilbert says, “The judgment of the Court of Appeal in Abbott vs SiBio confirms the scope of the UPC’s internal jurisdiction under the UPC Agreement — to many it is no surprise that until Ireland ratifies the UPC Agreement it is not a UPC state, as it is not a fully signed-up member of the UPC. The decision doesn’t deal with rights of representation.”

“Lawyers authorised in an EU state can appear before other EU states’ courts, including the UPC”

With 13 lawyers admitted in Ireland and an office in Dublin, the matter particular affects Powell Gilbert. Some rival firms such as Bristows are covering their bases with licences in both Ireland and Belgium. Some lawyers at Carpmaels & Ransford have also taken the Irish route but the firm mainly relies on the admission of its patent attorneys to the UPC, and it also has a partner qualified in Germany and France.

Wilson adds, “Lawyers authorised in EU countries including Ireland, Spain and Hungary are able to appear before the UPC in any event. This is because the UPC is subject to EU law and accordingly lawyers authorised in any EU state can appear before other EU states’ courts, including the UPC.”

No referral, no decision

The UK patent community discussed this matter early on because experts were not sure whether the Irish route was secure enough. It also opens the UPC for lawyers from the five other countries that have not yet ratified the UPCA, as well as lawyers from Poland and Spain. The latter have not yet signed the UPCA.

“A CJEU referral would only be in the interest of firms wanting to get rid of competitors”

However, the theory that lawyers licensed in an EU country can generally appear at the UPC is by no means certain in London. Some lawyers consider it unsound. “We won’t know for sure until the CJEU decides on it,” says a London solicitor.

But a referral to the CJEU seems a long way off. First of all, the opposing party would have to address this matter to the UPC in proceedings in which UK solicitors, for example, are the main representatives of a party. Presumably this would only be in the interest of continental European law firms wanting to get rid of competitors. But, as several experts told JUVE Patent, their clients would have to play along and, given that such an application would considerably delay infringement proceedings, this is rather unlikely.

European amity

Moreover, most continental law firms have no interest in upsetting their London colleagues. These often coordinate international proceedings and bring business to their European counterparts.

Some law firms such as Pinsent Masons, Bird & Bird or Taylor Wessing have their own offices in Dublin with licensed patent litigators. Therefore they do not need the courts to clarify this legal uncertainty. In addition, many welcome the involvement of UK solicitors because the UPC contains elements of common law.

“UPC judges want to keep the CJEU out of their affairs”

Even if such a case arose at the UPC, it is questionable whether the UPC would refer the issue to the CJEU. The UPC judges are confident and want to keep the CJEU out of their affairs as much as possible.

Thus the most reliable — and presumably quickest — option would be for Ireland and the other remaining five countries to ratify the UPCA as soon as possible. This would be in the interests of their lawyers and the UPC as a whole. Until then, some uncertainty remains. At present, the only word from Dublin is that the current government will not hold a referendum. Instead, the next elected government will inherit the matter in 2025.