Life as a technical judge at the UPC

The first group of patent experts embarked on their training course as technical judges at the UPC with a great deal of enthusiasm, idealism and curiosity. More than a year and a half after the court’s launch, the euphoria is just as unevenly distributed as the number of cases per judge. And the former has much to do with the latter.

Technical judges in fields such as mechanics count themselves among the lucky ones. They are slowly but surely becoming more experienced in their new role. The type of company active in this field is varied and thus the judges who work full-time as patent attorneys have fewer conflicts here. Not to mention there are already multiple cases filed in this field.

At the other end of the spectrum are the technical fields of pharma and biotech. Although there are already some major cases at the UPC — NanoString vs 10x Genomics being a prime example — they are still few in number. Patent attorneys in this segment face greater potential for conflicts of interest as many have already worked for the industry’s major players. As a result, even some of those judges appointed in the first round have garnered next to no practical experience.

Nine out of 75 technical judges — a total of 12% — have not yet heard a case at first instance. At the Court of Appeal, 24 technically qualified judges have at least one case. These are official figures provided by the UPC at the request of JUVE Patent. The UPC did not provide an overview per judge.

Good learning curve

Torsten Duhme is a good example of a technical judge who had an ideal start at the UPC. The electrical engineer has over 25 years of experience as a patent attorney at the Stuttgart patent law firm Witte Weller. The court appointed him as a technical judge in summer 2024. His first hearing is imminent and the cases are slowly piling up.

Duhme brings as much experience as enthusiasm to his new role as a technical judge. He also brings a great deal of composure. In his early 60s, he is in the final phase of his career as a patent attorney and is therefore already established and under less pressure than younger colleagues. “My goal is to bring my 20 years of experience as a patent attorney to bear as a technical judge. The experiences among technical judges are heterogeneous, but I do not feel intimidated by the new role, I look forward to it.”

That patent attorneys in the final phase of their careers have applied to become technical judges presents an opportunity for the UPC system. They bring litigation experience and are eager to put it to good use. As their careers in private practice approach their end they can pivot to an entirely new role. A deep-seated enthusiasm for the UPC is often a motivating factor here, with many having observed the court’s ups and downs throughout their career.

Simultaneously, however, this first generation of technical judges has also revealed a problem with the system. From a financial perspective, working at the UPC is hardly worthwhile for those established patent attorneys aged between 40 and 55 and right in the middle of their careers. The appropriately strict rules on conflicts all but rule out working as a patent attorney, especially in larger or international law firms.

Withdrawal of technical judges

Despite this, there has only been a single withdrawal of a technical judge since the launch of the UPC, namely of Jürgen Tischler. According to a procedural order from the Munich local division (UPC_CFI_168/2024), French patent attorney Patrice Vidon has also decided to step down. When asked by JUVE Patent, the UPC confirmed that a request seeking his retirement has been submitted, but that the Administrative Committee has not yet decided on a date. Vidon founded a medium-sized law firm in France with an offshoot in Asia. He also works for major players in the telecommunications industry.

Others, such as the well-known dual-qualified Gregoire Desrousseaux, withdrew early on once UPC officials established the exact terms of the code of conduct. These stipulate strict rules for conflicts. Several active litigators told JUVE Patent that these make it impossible to work in an active litigation practice or even an international law firm — especially in pharmaceuticals, biotech or telecommunications. The fact that, according to JUVE Patent sources, applying to become a technical judge was a controversial issue for numerous firms supports this view.

Candidates with fewer conflicts

One solution to achieve a balanced age structure in the UPC’s technical judiciary could be to have technical judges who do not work in parallel as patent attorneys, but as judges at the EPO or national patent courts. Examiners from the EPO and national patent offices could also be potential candidates, although they have less litigation experience. That said, the French Patent Office recently demonstrated how examiners can be trained for a judge’s role in a relatively short time when it introduced an internal appeals instance.

To date, the UPC has employed all technical judges on a case-by-case basis. Another option could be to follow the example of the UPC’s legally qualified judges and employ some technical judges on a full-time basis. This would then potentially be an interesting long-term career option.

However, there are two main differences between legal and technical judges. The first and most obvious difference is their technical specialty, which defines their sphere of work. The second difference is that those technical judges not employed in national patent offices lack the option of returning to a previous court.

Opportunities at the Court of Appeal

In 2023 and 2024, the UPC appointed additional technically qualified judges on the grounds that the caseload in electricity and physics had increased. Another factor was that more cases would soon end up at the Court of Appeal, which has two technically qualified judges on the panels. This makes the Court of Appeal uniquely attractive.

“I hope that I will be appointed for the Court of Appeal. I would be very happy to hold discussions with legal judges and another technical judge on the same panel,” says Michel Abello. “The debate between the technical judges is fruitful, because truth comes from the debate. And people in technical fields also have striking opinions.” Abello has served as technically qualified judge for mechanical engineering since the first round of appointments. In his main occupation he is name partner of French IP boutique Abello.

Nevertheless, it is not easy to predict how many UPC cases the Court of Appeal will hear this year. Many cases have recently been settled.

New appointments criticised

However, these potential appointments of additional technical judges have also come in for criticism. “There are currently already a lot of technical judges. Most technical judges only have a limited number of cases — this makes it difficult for them to develop optimal work processes in the new system,” says Michael Alt (all quotations are his personal opinions and not those of the court). The chemistry, pharmaceutical and biotech expert recently left the partnership at Bird & Bird and has outstanding litigation experience in pan-European pharmaceutical proceedings.

Alt argues, “If a technical judge spent about 20% of their working hours on UPC cases, i.e. about six to eight cases a year, they would be continuously involved and would be able to develop an optimal routine.” As a solution, Alt suggests, “First, no further new hires in areas where the TQJs do not yet have a substantial workload and then, second, before the end of the first six-year term of appointment, UPC officials could consider offering all technical judges the chance to work on a fixed-hour basis (part time or full time). This most likely would also significantly reduce conflicts.”

Ultimately, this solution would only be practicable if the number of cases increases accordingly across all technical areas. At the moment, there is every indication that this will happen. Ever more companies are filing their cases at the UPC, while national case numbers at the largest European courts are falling. The technical breadth of the patents-in-suit is already extensive and the companies suing are varied in size and industry. But the court would need to structure its budget for technical judges accordingly to enable permanent appointments.