The UPC Administrative Committee has finally published the complete list of legal and technical judges that will preside over the impending court. Observers can breathe a sigh of relief, since most of the 85 UPC judges have considerable experience with patent litigation. However, the list also contains a few more obscure names. So just how strong is the judical bench? Which players have made it into the Court of Appeal? And will these choices reassure Europe's patent market?
20 October 2022 by Amy Sandys
Now a long time in the making, the new Unified Patent Court should begin operations in the first half of 2023. Following calls in 2016 and 2019 for legal and technical judges, according to JUVE Patent sources the initial UPC Advisory Committee received over 1000 applications. It then invited up to 170 potential candidates to interview. Yesterday evening, the Administrative Committee – which took over the decision-making process following the Advisory Committee’s recommendations – published its final decision.
David Por, partner at Allen & Overy in Paris, says, “The names on the list are all very familiar to patent practitioners, which is great news. The challenge for the newly appointed judges, as from 1 April next year, will be to reinvent themselves, and transition from being German, French, Bulgarian, etc., judges to becoming those that shape this new supranational court and patent system.
That task will undoubtedly be an exciting one – and one that is also incumbent on patent specialists around Europe as they will become UPC litigators.”
Candidates from 16 countries had until 27 August 2022 to accept appointments across the nascent court, with both technical and legal judges in the mix. Now the Administrative Committee, on behalf of the UPC, has appointed 34 legal and 51 technical judges altogether. However, some patent lawyers have raised concerns about impartiality. They urge the UPC to clarify its rules of conflicts as soon as possible.
A French litigator says, “The appointed legal judges all have years of experience in patent litigation, which is a positive signal to the stake holders. Surprising to me is the limited list of technical judges in some fields which we expect will give rise to many cases, like electronics. I also note this list comprises patent litigators who are also European patent attorneys, or European patent attorneys belonging to firms which certainly expect to represent parties before the court.
Them being allowed to be a technical judge one day and to litigate in the UPC another day raises concerns that the Administrative Committee should address quickly by publishing the rules which will apply to check conflicts when appointing them for a case.”
The appointed legally qualified judges come from eleven of the 16 UPC member states, while the technically qualified judges hail from eight of the 16. As expected, the UPC did not select candidates from countries without a local division or without significant patent activities. Thomas Gniadek, partner at Simmons & Simmons in Munich, says, “This is a really big deal, and not at all the European nitty gritty that some feared. These judges justify the highest expectations for the new UPC system and are the best we have in Europe.”
Furthermore, the UPC has not yet filled two judicial posts at the Central Division of the Court of First Instance. Posts at the local division in Copenhagen also remain vacant. However, the committee will fill these positions prior to the court’s opening. JUVE Patent is not yet aware of the extent to which the judges will work for the UPC. Some will work full time, but most will work part time.
Furthermore, the UPC has clarified important HR matters. German judge Klaus Grabinski is the president of the Court of Appeal, with the court also appointing Florence Butin from France as the first president of the Court of First Instance.
Two Court of Appeal judges, Rian Kalden of the Netherlands and Ingeborg Simonsson of Sweden, as well as three judges from the Court of First Instance – Camille Lignieres of France, and Ronny Thomas and Peter Tochtermann, both from Germany – complete the Presidium. The UPC has not filled the positions of registrar and deputy registrar, with recruitment still ongoing.
It seems those responsible for the UPC’s development have largely met the demand from industry and the legal profession – namely, to equip the new court with as many experienced patent judges as possible. Among the many well-known patent judges from the UPC member states, several are well-renowned and of prominent standing.
On the other hand, the patent market considers some individuals as more up-and-coming, with a spot at the UPC top table giving them a chance to earn their stripes. Regardless of experience levels, however, watching lawyers perceive all candidates as being an asset to the new supranational system.
Germany provides a twelve-strong largest contingent of legally qualified judges, followed by France with five. Italy and the Netherlands have four judges each. Andreas von Falck, partner at Hogan Lovells in Düsseldorf, says, “The choice of judges reflects the high quality of the selection process. And best of all, there are no surprises. Thus, those responsible instil confidence in the future functioning of the UPC.”
The market always expected Germany to make the biggest contribution to the UPC in terms of staff, as previously demonstrated in a JUVE Patent survey. This identified figures such as Klaus Grabinski as popular picks. At the same time, JUVE Patent’s recent international survey of patent experts found German judges topping the list of reader’s favourites. Daniel Voß took the top spot, closely followed by Düsseldorf colleagues Sabine Klepsch and Thomas Kühnen. However, Daniel Voß and Thomas Kühnen are not on the UPC’s list.
On the other hand, many of the most important German patent judges appear. Ulrike Voß, Matthias Zigann, Bérénice Thom, Holger Kircher and Peter Tochtermann are no surprise; they were considered by experts to be hot candidates for a UPC job. But it is surprising that the UPC appointed Sabine Klepsch to the Hamburg local division, since the Hamburg patent court is considered the weakest of the four German patent courts. This is due to its small number of cases.
But Klepsch, as presiding judge of the 4c Civil Chamber at the Regional Court Düsseldorf, has a reputation for having extensive experience in mobile communications and life sciences proceedings. Thus, it seems likely that those responsible for the UPC want to ensure that Hamburg receives a good number of cases.
Ronny Thomas is a surprise for the Düsseldorf local division, with the deputy presiding judge at Thomas Kühnen’s 2nd Civil Senate at the Higher Regional Court Düsseldorf not on many people’s radar. Tobias Pichlmaier, on the other hand, is celebrating a comeback. In January, the former presiding judge of the 21st Civil Chamber took over an antitrust chamber. He thus brings antitrust expertise to the UPC, as does Patricia Rombach for the UPC Court of Appeal.
On the other hand, Stefan Schilling – who is headed for the local division in Hamburg – remains relatively unknown.
For some time, he was a judge at the 27th Chamber at the Regional Court Hamburg, where the court delegated him to senate 1 of the Federal Court of Justice. More recently, he worked at the Higher Regional Court Hamburg’s 5th Senate where he is not involved with IP. As such, many patent experts are not yet aware of his offering.
In the Paris central division, however, Maximilian Haedicke is known in the German patent market, although he is not currently working as a patent judge. As a professor of IP and competition law, Haedicke teaches at the University of Freiburg and is active as an expert consultant, mediator and arbitrator. Between 2011 and 2017, he worked as a patent judge at the Higher Regional Court in Düsseldorf.
From the Netherlands, the market considers Edger Brinkman from the District Court of The Hague highly experienced. He also harbors a good international reputation – indeed, patent practitioners have consistently mentioned Brinkman as a hot candidate.
Mark van Gardingen, partner at Dutch boutique Brinkhof, says, “Edger Brinkman is a regular speaker and mock trial judge at conferences, and is involved in many decisions in complex technical fields such as biotechnology and electronics/standards. He is also known for his cross-border PI decisions. As such, he really takes a European approach to patent law, which is just what we need for UPC litigation.” Brinkman will run the local division in The Hague together with Margot Kokke.
But Kokke is one surprise on the list; among Dutch patent judges, she is less well known. This is partly because she has not been involved in deciding patent cases for as long as Brinkman. However, her inclusion demonstrates that the UPC Administrative Committee is relying on a mixture of well-known senior and experienced younger patent judges.
It is no surprise that with Rian Kalden and Peter Block, the UPC has appointed two experienced Dutch patent judges from the Court of Appeal in The Hague for the UPC Court of Appeal. The market especially always considered Rian Kalden a safe candidate for this job.
Among the major UPC states, the Italian contribution is especially interesting since the country is hoping that Milan will be choice for the pharmaceutical division. Together, Alima Zana and Pierluigi Parotti preside in the IP chamber at the Court of Milan. Both have a track record in presiding over important patent and trade secrets cases, building a strong reputation for patent jurisprudence across their careers.
Laura Orlando is managing partner at Herbert Smith Freehills in Milan. She says, “It’s exciting to see so many high-profile names from the Italian patent law world on the list. Pierluigi Perrotti and Alima Zana are two of the most senior and experienced judges of the IP Court of Milan, including in the life sciences space. This is, notably, the focus area of the former London seat of the Central Division that we hope to see coming to Milan in the not too distant future.”
In the case concerning Gilead’s supplementary protection certificate for Truvada, Alima Zana heard the portion of the Italian case against Mylan, while Pierluigi Perrotti presided over the other parallel cases against Teva, EG, Dr. Reddy’s and DOC Generici. Regarding telecommunications, Zana has heard cases brought by Italian patentees against Samsung and Telecom Italia. Perrotti has led the Italian side of multiple international disputes, including HTC against IPCom, and SpgPrints against MS/Dover.
Andreas von Falck says, “I am particularly pleased about the diversity of the judges at the UPC. Incidentally, the same applies to the technical judges. It is noticeable that also and especially the Italian patent attorneys, which traditionally play a major role in Italian court proceedings as ‘consulente technico’ (advisor to the judge), are prominently represented.”
Orlando adds, “I am also pleased to see so many well-known Italian patent attorneys among the technically qualified judges.”
In recent years, France has become an important location for patent disputes. The number of newly filed lawsuits at the 3rd chamber of the Paris Judicial Court, which is responsible for IP, is rising. As well as national disputes, more and more French cases in pan-European proceedings are landing on the tables of the IP judges and attracting cross-border attention.
Paris is also the location of one of the central divisions of the UPC. It is therefore not surprising that the UPC has appointed four experienced IP judges from France; Françoise Barutel, Florence Butin, Carine Gillet and Camille Lignieres. A French patent litigator says, “All the legal judges from France have experience in patent proceedings and a classical profile of French judges and/or magistrates. It remains to be seen if they can contribute to shaping the UPC.”
However, as judges at the 1st Chamber of the Court of Appeal in Paris, Camille Lignieres and Françoise Barutel have been involved in patent disputes for years. Barutel, for example, was an associate judge in the appeal hearing in the cross-border dispute over pemetrexed. She is also an external member of the EPO’s Enlarged Board of Appeal. Carine Gillet and Florence Butin are also no strangers to the French patent scene. Both were active as judges at the 3rd Chamber of the first-instance Judicial Court Paris responsible for IP until September 2021.
Florence Butin then moved to the Paris Court of Appeal, while Carine Gillet took up a position at the Court of Appeal in Douai. After a spell in other areas of law, their move to the UPC marks a return to the IP world. On the other hand, Mélanie Bessaud is less widely known. Previously, from 2009 – 2014, she worked in the 3rd chamber of the Judicial Court where she gathered some experience in IP. Now she works at the Supreme Court in Paris.
With one Italian, two Dutch and two German judges, the UPC Administrative Committee is demonstrating the greatest possible patent competence at the important appeals court. After all, the second instance court is set to ensure uniformity of UPC jurisprudence. One of the most experienced German patent judges, Klaus Grabinski, was appointed to the second instance of the UPC. Many experts consider Grabinski as a natural candidate for president of the Court of Appeal.
Years ago, the market also considered Rian Kalden a candidate for the second instance of the UPC. Now she heads the second panel of the court. Mark van Gardingen says, “I am very pleased with the appointment of all of the judges. Rian Kalden and Peter Blok are both very experienced, really excellent judges. They are knowledgeable, hands on, and a pleasure to be pleading to – unless you’re not on top of your game. They will provide and ensure top legal quality to the system as a whole.”
From Germany, Patricia Rombach currently works for the Antitrust Senate at the German Federal Court of Justice. Prior to this, she was a patent judge at the Mannheim Regional Court. Many had not expected her to be a candidate for the Court of Appeal.
From the Italian side, the UPC has chosen Emanuela Germano to preside over the Court of Appeal. Although acting as a civil judge throughout her career, currently Cortese is the president of the IP Court of Appeal in Turin. Thus, she has a close connection to her Milanese colleagues. Since 2003, she has been a member of the specialised section on intellectual and industrial property which is now known as the “specialised section on company law.”
Another addition is Ingeborg Simonsson, who is currently a judge at Stockholm City Court in Sweden. A leading competition law expert, she currently works in the division for competition law and IP, as well as acting as an associate professor of EU law at the University of Stockholm. Simonsson also has experience in private practice spanning six years.
The Administrative Committee also published the list of 51 technical judges, which includes national patent court judges. Among them are Carola Wagner and Uwe Ausfelder from the German Federal Patent Court.
Well-known patent attorneys, including Bernhard Ledeboer from Dutch patent attorney firm V.O., dual-qualified András Kupecz from Pinsent Masons in Amsterdam, dual-qualified Grégoire Desrousseaux from top French firm August Debouzy and Arwed Burrichter from Düsseldorf-based patent attorney firm Cohausz & Florack, also appear.
The committee also appointed a number of in-house patent attorneys as UPC judges. JUVE Patent will publish detailed analysis and background information on the technical judges at the UPC in the next few days. (Co-authors: Konstanze Richter, Joshua Silverwood, Mathieu Klos)