Patent attorney dominance among UPC technical judges leads to conflict debate

Last Wednesday, the UPC Administrative Committee published its list of UPC judges. For the most part, patent experts on LinkedIn were in agreement that the legally and technically qualified judge selection was a success.

However, just a few hours after the committee announced the 51 names, a debate flared up on social media about potential conflicts which the many patent attorneys on the list might face in their role as a technical judge. Most technically qualified judges will begin to work for the UPC on a part time basis.

But this is precisely what worries some users of the new system, many of whom took to social media to voice their concerns.

Grégoire Desrousseaux

Technical judge discussions

Well-known Hoffmann Eitle partner Thorsten Bausch, who is known for his strong opinion pieces in the Kluwer Patent Blog, wrote on LinkedIn, “While their (the UPC judges) quality seems to be impeccable and justifies hopes for a bright future of this new court, the concept of part-time judges who are at the same time (patent) attorneys in private practice or industry causes me some headaches.”

Bausch stressed, “I hope that the judges will be very meticulous in checking and avoiding potential conflicts of interest and that no law firm will even think of abusing the fact that one of their shareholders has been appointed as a UPC part-time judge for marketing purposes.”

More than one hat

Marcel Xavier Peigné, who also works for Hoffmann Eitle, agrees. He writes, “I would say even in case of an absence of conflict, as an attorney or court user you always have an interest to make a case law in a direction or another, for a strategic file. So if you are a judge at the same time, this looks quite unfair!”

Oscar Lamme from law firm Simmons & Simmons writes, “It was, however, also a bit surprising to see that many of the technical judges work as a patent attorney and/or lawyer in private practice or industry. This obviously raises the question how conflicts and impartiality will be dealt with?

The UPC Agreement and the Statute provide some guidance, but also leaves room for discussion.” Hoffmann Eitle partner Morten Garberg adds, “The sooner it is possible to move to a judge with one hat the better.”

Arwed Burrichter

Technical judges in the spotlight

In its announcement last week, the committee named 51 technically qualified judges. Of these, 35 are from private practice and currently work as patent attorneys in law firms.

Well-known patent attorneys, including Bernard Ledeboer from Dutch patent attorney firm V.O., dual-qualified András Kupecz from Pinsent Masons in Amsterdam, Grégoire Desrousseaux from top French firm August Debouzy and Arwed Burrichter from Düsseldorf-based patent attorney firm Cohausz & Florack, are among them.

Other well-known names in the patent community include Michael Alt, who is a partner at Bird & Bird in Munich, and Renaud Fulconis from French firm Bandpay & Greuter.

The committee also appointed eight in-house patent attorneys. Among them is Rudi Goedeweeck from Belgium, who is currently working for AGFA-Gevaert. The list also includes Danish lawyer John Petersen from Lundbeck.

Indeed, the list highlights in-house expertise from all sectors of technology, such as the two French lawyers Pascal Attali from Bose and Eric Augarde from Orange. Nokia’s Simon Walker from Finland and Stefan Wilhelm from 3M in Germany also made the cut.

András Kupecz

Judges the minority

However, only seven of the 51 judges currently work at a UPC member state court or at the European Patent Office as active judges.

Of these, five currently preside over the German Federal Patent Court, including Roman Maksymiw. He is presiding judge of the 14^th Senate at the Federal Patent Court.

According to JUVE Patent information, Alain Dumont from Belgium is currently a technical judge at the EPO Boards of Appeal. But whether he can remain in post is doubtful. EPO patent examiners and Boards of Appeal members cannot simultaneously hold part-time UPC judge positions due to conflicts of interest.

However, this is unlikely to apply to mechanical engineer Pascal Lucien Pierre Weber from France, who was a Boards of Appeal member until 2020. JUVE Patent has no information about his current role. Patrik Rydman has now been full time patent judge for eight years. The first two years he worked at the Swedish Court of Patent Appeals. Since six years he is now with the Swedish Patent and Market Court.

The central division and the Court of Appeal will appoint technical judges by default, as is it mandatory for them to preside over cases in these courts. On the other hand, the UPC administrators will call the judges into its local and regional divisions at the request of a party, for example when revocation and infringement claims are heard together.

French and Germans dominate

The two strong patent nations in the UPC system, France and Germany, provide most of the technically qualified judges. Of these, 15 hail from Germany, with twelve coming from France. Italy follows with seven technically qualified judges.

Belgium and Denmark are providing four each, the Netherlands and Finland three each and Sweden only two. Given the lively patent attorney scene in the Netherlands, having just three technically qualified Dutch judges is surprising. On the other hand, the Netherlands came off very well in terms of legally qualified judges. It provides four of the 31 appointed.

Michel Abello

The Administrative Committee has assigned the 51 technically qualified judges to five technical fields. At 16, the majority were appointed to the field of mechanical engineering. Parties file a sizeable number of patents in this area.

Chemistry and pharmaceuticals follow with ten judges, electricity with nine judges, and biotechnology and physics with eight judges each.

However, that there is at least one experienced judge from the German Federal Patent Court in each field is noteworthy. The only exception is electricity, where Alain Dumont brings experience as an EPO Boards of Appeal technical judge.

UPC responds to concerns

When asked by JUVE Patent, Johannes Karcher, vice chair of the UPC Administrative Committee and Coordinator for Legal Affairs, said, “The UPC Agreement has considered this issue and has appropriate rules in place to rule out any conflicts in the adjudication process”.

Karcher refers to Article 17 of the agreement, which stipulates judicial independence and impartiality. Paragraph 2 of the article states that, “technically qualified judges who are full-time judges of the Court may not engage in any other occupation, whether gainful or not.”

Karcher adds, “The UPC will, however, have to rely on part-time judges, at least at the beginning, as there are some 50 fields of technology”. Article 17, Paragraph 4 permits this. He says, “For these cases, the agreement states – in Article 17, Paragraph 5 – that potential conflicts of interest are addressed and resolved on a case-by-case basis. If there is a conflict of interest, a judge will not participate in the proceedings.”

Bernard Ledeboer

Partial objections

Karcher also refers to rules laid down in the UPC Statute, Article 7, Paragraph 4. Any party to an action may object to a judge taking part in the proceedings where the judge is suspected, with good reason, of partiality. He explains, “Rule 346 of the UPC Rules of Procedure governs this process.”

The vice chair also refers to a similar tradition in some UPC member states. In Denmark, Finland and Sweden, for instance, patent attorneys are appointed as technical judges. Among the 51 judges, Finn Kirsikka Etuaho, two Danes Casper Struve and Claus Elmeros, and the Swede Anders Hansson already have judicial experience.

Patent attorneys in the Netherlands also work as part-time judges. Among them is Cornelis Schüller, who decides patent cases as a part-time judge at the District Court of The Hague. Furthermore, on LinkedIn, patent attorneys in Switzerland report positive experiences with patent attorneys working as part-time judges.

Patent firms addressing own issues

Conflicts of interest are a big issue in companies, but especially in law firms. One lawyer from a firm that is set to provide one of the 51 technically qualified judges reports clear internal agreements.

They say, “We discussed with our colleague from the very beginning that their work as a UPC judge must not lead to us being unable to advise clients.”

Stefanie Parchmann

Among the other partners, there is huge concern that participation in a less important UPC revocation action, for example, might block a major instruction. This means that technically qualified judges must check twice for conflict. Firstly, internally in their firms and secondly at the UPC. They must ensure that their previous work as a legal practitioner does not disqualify them for certain cases.

In any case, sooner or later the UPC’s goal is to appoint full-time judges. Above all, this will depend on the new court’s success. It is likely to be mostly patent attorneys nearing the end of their careers who aspire to become judges. (Co-author: Konstanze Richter)

Full list of technically qualified judges

Biotechnology

• Arwed Andreas Burrichter – Germany; patent attorney at Cohausz & Florack
• Eric Enderlin – France; patent attorney at Novagraaf
• Rainer Friedrich – Germany; in-house patent attorney at CSL Behring
• Paolo Gerli – Italy; patent attorney at Botti & Ferrari
• Krister Karlsson – Finland; patent attorney at Kolster
• András Kupecz – Netherlands; patent attorney and lawyer at Pinsent Masons
• Roman Maksymiw – Germany; presiding judge of the 14th Senate at Federal Patent Court
• Cornelis Schüller – Netherlands; patent attorney at IP-Portunity (also technically qualified judge at the District Court of The Hague)

Chemistry and pharmaceuticals

• Michael Alt – Germany; patent attorney at Bird & Bird
• Kirsikka Etuaho – Finland; patent attorney at Espatent Oy (also technically qualified judge at the Market Court Helsinki)
• Renaud Fulconis – France; patent attorney at Bandpay & Greuter
• Rudi Goedeweeck – Belgium; in-house patent attorney at AGFA-Gevaert
• John Meidahl Petersen – Denmark; in-house patent attorney at Lundbeck
• Stefanie Parchmann – Germany; patent attorney at Maiwald
• Laure Sarlin – France; patent attorney at Beau de Loménie
• Casper Struve – Denmark; patent attorney at Zacco (also technically qualified judge at the Danish Maritime and Commercial High Court)
• Steen Wadskov-Hansen – Denmark; patent attorney at Budde Schou
• Carola Wagner – Germany; judge at the Federal Patent Court

Electricity

• Pascal Attali – France; in-house patent attorney at Bose Corp
• Eric Augarde – France; patent attorney at Brevalex
• Bertrand Cochet – France; in-house patent attorney at Orange
• Grégoire Desrousseaux – France; patent attorney and lawyer at August Debouzy
• Alain Dumont – Belgium; technical judges at the Boards of Appeal of the European Patent Office
• Dennis Kretschmann – Germany; patent attorney at Boehmert & Boehmert
• Alessandro Sanchini – Italy; patent attorney at Modiano & Partners
• Andrea Scilletta – Italy; patent attorney at IP Sextant
• Simon Walker – Finland; in-house patent attorney at Nokia

Mechanical engineering

• Michel Abello – France; patent attorney at Loyer & Abello
• Uwe Ausfelder – Germany; judge at the Federal Patent Court
• Koen Callewaert – Belgium; patent attorney at Bureau Callewaert
• Giorgio Checcacci – Italy; patent attorney at Checcacci & Partner
• Paolo Ernesto Crippa – Italy; patent attorney at Jacobacci & Partner
• Claus Elmeros – Denmark; patent attorney at Plougmann Vingtoft (also technically qualified judge at the Danish Maritime and Commercial High Court)
• Frédéric Gaillarde – France; patent attorney at Cabinet FGPI
• Bernard Christiaan Ledeboer – Netherlands; patent attorney at V.O.
• Elisabetta Papa – Italy; patent attorney at Società Italiana Brevetti
• Martin Schmidt – France/Germany; patent attorney as single practitioner and at IXAS Conseil
• Uwe Schwengelbeck – Germany; judge at Federal Patent Court
• Max Tilmann ­– Germany; patent attorney since 2022 at König Szynka Tilmann von Renesse; now own firm
• Marie-Paule Vandeberg – Belgium; patent attorney at MPV Patent
• Patrice Vidon – France; patent attorney at Vidon
  Pascal Lucien Pierre Weber – France; former judges at the Boards of Appeal of the European Patent Office
• Stefan Wilhelm – Germany; in-house patent attorney at 3M

Physics

• Michael Fleuchaus – Germany; patent attorney at Fleuchaus & Gallo
• Anders Hansson – Sweden; patent attorney at Kransell & Wennborg (also technically qualified judge at the Sveriges Domstolar)
• Ulrike Keltsch – Germany; in-house patent attorney at Airbus
• Gérard Myon – France; patent attorney at Lavoix
• Dörte Otten-Dünnweber – Germany; judge at Federal Patent Court
• Andrea Perronace – Italy; patent attorney at Jacobacci & Partners
• Christoph Dominik Schober – Germany; patent attorney at Flügel Preissner Schober Seidel
• Patrik Rydman – Sweden; judge at the Swedish Patent and Market Court