Five French and five Germans top the list of the most popular judges for the UPC. This is the result of an international survey of patent experts by JUVE Patent. Such strong dominance of judges from the two largest UPC states could, however, be problematic for the multinational patent court's acceptance.
24 November 2021 by Mathieu Klos
The Unified Patent Court has already defied many a problem in its now more than 10-year development phase. Years of bitter wrangling over new procedural rules, Brexit and two constitutional complaints in Germany put extreme strain on the nerves of UPC officials and patent experts worldwide. Last Friday, the Austrian Parliament voted in favour of the ratification of the protocol on the provisional agreement (PAP) in its first reading.
The important preparatory phase of the Unified Patent Court could now start soon. But those responsible still face perhaps the greatest challenge. Which judges are to dispense justice at the UPC?
Patent experts in companies and patent firms have made it clear in countless discussions and surveys (including some by JUVE Patent) that patent owners will only entrust good patents to the UPC system if it has as many experienced and competent judges as possible. Otherwise, say in-house lawyers, their companies will continue to pass cases to national courts rather than use the new court.
“No company is going to play roulette,” says the head of a large German patent department. “We need as much patent law expertise as possible at the UPC – right from the start.”
JUVE Patent’s survey of patent experts worldwide revealed readers’ favourite candidates for the two top jobs in the UPC system. Some 1,300 experts participated in the survey. Respondents voted for their favourites among the European judges for both UPC instances, as well as their favourites for the two presidential roles.
JUVE Patent readers would like to see German judge Klaus Grabinski as head of the Court of Appeal, unarguably the most important job at the UPC. Grabinski is currently at the Federal Court of Justice. As president of the appeals court, he ought to ensure the standardisation of case law.
At the helm of the Court of First Instance, however, survey participants would prefer French judge Paul Maier. From an administrative standpoint, the position is an important one. The president must ensure the smooth functioning of the first instance. He or she not only assigns cases to the local chambers, but also plays a significant role in staffing the judges’ benches. The judges’ benches will be spread over multiple countries. Moreover, they will always be international and, depending on the case, composed of legal and technical judges.
35% of the survey’s participants came from France and Germany respectively. The remaining participants were dispersed across other European countries, including the UK, as well as Asia and North America (for our methodology please see here). A large majority of 86% said they still supported the UPC.
In total, 28.5% of participants voted for Klaus Grabinski for president of the Court of Appeal. Grabinski became involved in the UPC at a very early stage. He participated in the drafting of the treaty and in the negotiations for the Rules of Procedure.
He leads by a wide margin over Alain Girardet, who is the second favourite with 12.7%. The Frenchman retired in 2019 from the Cour de Cassation. French judges normally retire at 62. With the age limit for UPC judges at 67, Girardet could still qualify for a few years.
Other well-known patent judges from Germany and France, such as Thomas Kühnen (Higher Regional Court Düsseldorf), Paul Maier (EUIPO) and Marie Courboulay, also received votes. Courboulay, the grand dame of French patent law, has already retired. However, the 65-year-old still has two years before she reaches the UPC age cut-off.
The first favourite to hail from outside France and Germany is Italian judge Claudio Marangoni (IP Court of Milan), who came in 8th place. During JUVE Patent’s last survey in 2017 Marangoni was not yet on patent experts’ radar; Italy’s support for the UPC was still tentative.
In the end, however, the judges of the Court of Appeal will have to choose their own president. How many judges will serve on the court is not yet clear, as it depends heavily on the number of chambers. A chamber comprises three full-time legal judges, and two technical judges assigned on a case-by-case basis. Only the permanent judges can elect the president.
It will take some time before the first cases arrive at the Court of Appeal. As a result, there will probably be fewer chambers when the UPC first opens. Experts assume that initially five legal judges will work at the Court of Appeal.
If the users of the new court have their way, these will be Klaus Grabinski, Alain Girardet, François Ancel (Court of Appeal Paris), Thomas Kühnen and Carine Gillet (Court of Appeal in Douai, France). These are the top five most popular judges respectively for the UPC Court of Appeal, according to the survey. A purely French-German panel of judges would ensure uniformity of UPC jurisprudence.
However, such a composition is unlikely to be politically feasible. In reality, the configuration will probably be much more international. For example, the well-known Dutch patent judge Rian Kalden (Court of Appeal The Hague), who came in 11th place, and Claudio Marangoni from Milan, who ranked 13th, could certainly hope for a seat on the UPC Court of Appeal.
It is not yet clear which judges have thrown their hat into the ring for a UPC judgeship. The Preparatory Committee still has about 1,000 applications from judges, Alexander Ramsay, chairman of the Preparatory Committee, told JUVE Patent. Experts believe that around two-thirds of these are likely to be for technical judges.
But almost all patent judges from Germany and France are said to have applied. There were also strong applications from the Netherlands. And with Milan vying for the former London divisions, it can be assumed that Italian IP judges will have followed suit. It is considered certain that Rian Kalden and Claudio Marangoni will be available for the UPC.
Following the UK’s withdrawal from the UPC project, the highly qualified patent judges from London, such as Colin Birss and Richard Arnold (both Court of Appeal London), can no longer take part. Their expertise, however, is precisely what is needed at the Court of Appeal, as the UPC Rules of Procedure have strong common law elements.
One possibility is that a surprise candidate from Ireland could make it to the Court of Appeal. Ireland is a UPC member state and is seeking a local division, even though Dublin is not generally regarded as a patent court city. Whether Irish judges have applied for the UPC has not emerged.
Klaus Grabinski is probably the only sure contender for the UPC Court of Appeal. He was also considered a hot candidate for the post of president early on. As early as 2017, participants in JUVE Patent’s first international survey voted him the top favourite for president.
Many of the UPC’s future users consider Grabinski to be the ideal candidate. The 59-year-old can look back on almost 30 years of experience in patent infringement litigation. Initially, he worked as a patent judge at the Düsseldorf Regional Court and, since 2000, at the Patent Senate of the Federal Court of Justice. Here, he deals not only with patent infringement cases but also with revocation cases under the German bifurcation system.
“He is an excellent and very experienced judge and has great English skills,” says one survey participant. Another describes him as “one of the most important people for the UPC, well connected” and praises his “international focus”.
Over the years he never tired of promoting the court – even when the project was in danger of failing at the last hurdle because of the constitutional complaints in Germany. A respondent describes Grabinski as “familiar with the UPC. Best qualified for the post of president of the appeals court”. Anything other than the election of Grabinski as president of the Court of Appeal in Luxembourg would therefore come as a big surprise.
The race for president of the Court of First Instance is still wide open. The only certainty is that it will be a French national. This is stipulated in Article 14 of the UPC treaty. But again, it is the judges of the Court of First Instance who elect their president from among their own number.
The participants in the JUVE Patent survey voted for Paul Maier from Alsace with just under 15%. Alain Girardet (14%) and Marie Courboulay (11%), two well-known but now retired patent judges from Paris, follow in second and third place respectively.
Courboulay was long considered the favourite for the post. For many years she positioned herself most strongly for the UPC. Unlike many of her French colleagues, she clearly specialised in patent law and promoted the UPC internationally. However, the various delays in the UPC process put a spanner in the works. She retired in 2018.
It is not known whether Courboulay and Girardet plan to come out of retirement and don the judicial robes for a few more years at the UPC.
Time could also be running out for Paul Maier to make his mark as president of the Court of First Instance. The 63-year-old would have four years remaining until the age limit of 67. A presidential term lasts 3 years. So if the UPC starts next year, the Strasbourg-born lawyer would still have time.
Maier is currently Director of the European Observatory on Infringement of IP Rights at the EUIPO in Alicante. He has had primarily an administrative career with a broad connection to IP rights. His work for the European Commission and EUIPO should provide him with sufficient international experience and language skills to set him apart from most French candidates.
“Speaks perfect English, German, French and Spanish,” praised several survey respondents. “Paul Maier did excellent work at the observatory and would, without doubt, make an excellent president of the Central Division,” says another.
Between 2005 and 2013, he was even president of the Boards of Appeal at EUIPO. Even if he is not a designated patent judge, he perhaps combines the legal and organisational skills necessary for the office of president. “Maier has long-standing experience and knowledge of the EU institutions,” emphasises a survey participant.
With the survey’s top three candidates for president of the Court of First Instance approaching the age cut-off, France would do well to have a younger candidate as an ace up its sleeve.
In the JUVE Patent survey, however, two judges with many years of experience follow in 4th and 5th place, namely Marie Salord and François Ancel respectively. Many survey participants consider Salord to be one of the most renowned French judges in patent law. However, her experience in this field dates back several years. She worked in the IP chamber of the Tribunal judiciaire de Paris until 2014. Since 2017 she has worked at the French Office for the Protection of Refugees and Stateless Persons (OFPRA).
Ancel is president of the international commercial chambers at the Court of Appeal in Paris and has many years of experience in IP at the Tribunal judiciaire de Paris. Currently he works on international proceedings. Many survey participants attested to his patent expertise and international experience, making him somewhat of an insider tip.
JUVE Patent readers ranked two younger judges with a high level of patent expertise jointly in 6th place. Carine Gillet just recently took over a position at the Court of Appeal in Douai, with Nathalie Sabotier succeeding Gillet. French patent litigators hold both judges in high respect for their technical understanding in patent disputes.
Gillet previously worked at the Tribunal judiciaire de Paris. A number of her decisions have attracted attention in the European patent community, such as the proceedings between Eli Lilly and Fresenius Kabi. Gillet also made French patent history with her anti-anti-suit injunction in the dispute between IPCom and Lenovo over the 100a patent. But in late summer Gillet left the IP world for other areas of law.
Nathalie Sabotier first headed the second section of the IP chamber of the Paris court before taking over Gillet’s previous position. Sabotier has also gained experience in administrative tasks as President of the Tribunal judiciaire. During 2021, she presided over one of the most extensive first-instance hearings, in the lawsuit brought by Intellectual Ventures against Bouygues Telecom and Orange. Sabotier also led one of the cases in MSD’s SPC battle over a cholesterol-lowering drug.
In terms of patent law experience, both judges are predestined for the UPC.
Alain Girardet, François Ancel, Carine Gillet and Nathalie Sabotier are also the names that top the list of the most popular UPC judges overall. Rounding out the top five of this list is current Paris Court of Appeal judge Françoise Barutel. She, too, boasts patent expertise.
German patent judges Matthias Zigann (Regional Court Munich), Klaus Grabinski, Daniel Voß (Regional Court Düsseldorf) and Ulrike Voß (Higher Regional Court Düsseldorf), follow in 6th to 9th place.
JUVE Patent asked readers to vote for the judges they would definitely like to see at the UPC. Each participant was allowed to nominate five candidates.
Marie Courboulay and Peter Tochtermann (Mannheim Regional Court) complete the top 10 list. Assuming that Courboulay and Alain Girardet will not be active at the UPC because of the age limit, Thomas Kühnen, who came in 12th place, would still slip into the top 10.
The presiding judge of the Higher Regional Court Düsseldorf is probably one of the most prominent patent judges in Europe. But unlike Grabinski, Kühnen was never considered an unconditional supporter of the new court. Nevertheless, the participants of the first JUVE Patent survey in 2017 voted him the most popular UPC judge.
The favourite German judge in this year’s survey is Matthias Zigann. The Munich patent judge has never made a secret of his ambitions for the UPC. Internationally, he is probably the best-known German patent judge at present. His FRAND decisions in various mobile phone cases such as Qualcomm against Apple, or Nokia and Sharp against Daimler, launched him to global renown. In the last twelve months, his anti-suit injunction decisions in China, such as his headline-grabbing AAAASI in InterDigital/Xiaomi, have brought him considerable acclaim. “Creative thinker beyond borders. He will move the Unitary Patent Law forward,” predicts one survey participant.
The strong dominance of French judges is also due to the fact that a high number of participants from France took part in the survey. In the French patent community, support for the UPC is high. Many law firms want a stronger role in the European patent market in the future. A UPC with strong French representation would be ideal.
French patent judges are currently making considerable efforts to strengthen their experience in patent litigation. Recently, there have been some changes at the Tribunal judiciaire de Paris. The first instance of the French patent courts is now well staffed. But some still consider French patent judges to be less experienced than their German counterparts. The German courts hear significantly more patent cases.
Dutch patent judges such as Edger Brinkman, who came 26th, Rian Kalden (27th) and Robert van Peursem (39th) are also considered internationally to have significantly more experience.
Not only the French, but also the German participants of the survey mainly voted for the most experienced judges. Edger Brinkman, Rian Kalden and Claudio Marangoni (18th place) are the only judges from other countries to be voted into the top 30, which is dominated by French and Germans. The judges from the Netherlands and Italy received broad support from many different countries. However, they did not garner as many votes as the strongly positioned French and German judges.
Meanwhile, it has also become public how many judges the UPC planners are seeking for the launch. The Preparatory Committee will have to select around 95 legal and technical judges in the next few months. Alexander Ramsay confirmed this.
In 2017, those in charge budgeted for much less with 16 full-time positions. Ramsay expects the committee to appoint 5 full-time judges at the start. In addition, the committee is seeking 90 part-time judges – both legally and technically qualified.
Most judges will be allocated to a pool and this will likely be much more international than the JUVE Patent survey suggests. Not all good candidates from France and Germany will make it to the UPC. There are too many highly qualified patent judges, especially in Germany.
If the second chamber of the Austrian Parliament completes the ratification of the PAP in the next few weeks, those responsible for the UPC will finally be able to start the preparatory work after many years of back and forth. The plan is for the UPC to launch at the end of 2022.
Until then, the IT system still needs to be put on a secure footing and the rules for opting in and out of European patents need to be finalised. Above all, however, those responsible must have a sure hand in filling the judges’ posts for the Local and Central Divisions, as well as the Court of Appeal.
They will have to balance national interests with the principle of parity in composing the judges’ pools and also meet the strong desire of future users for the highest possible quality of patent law. The pressure on the judge selection committee could not be greater.
Co-author: Konstanze Richter
Next week you can read which technical judges readers want to see at the UPC.