Of the 51 technically qualified UPC judges, 43 are patent attorneys from patent firms and in-house companies. Only a small number of previously qualified technical judges made the list. Nevertheless, the selection would seem a success were it not for a heated debate raging in the patent community over potential conflicts between the role of judges, and the client relationships which stem from the private practice of many of the new recruits.
27 October 2022 by Mathieu Klos
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.
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.”
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.”
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.
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 14th 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.
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.
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.
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.”
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.
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.”
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)