UPC users want experienced patent attorneys as technical judges

In the JUVE Patent survey 2021, participants named clear favourites among the legally qualified judges for the UPC. However, when it comes to the technically qualified judges, the results are less straightforward.

Respondents most frequently named French patent attorney Stephanie Michiels of Lavoix as a favourite for a technical judge position at the Unified Patent Court. Close behind are Alexandre Lebkiri of Camus & Lebkiri, and Oliver Tischner, also of Lavoix.

A high proportion of those patent attorneys named most frequently are French nationals. This result is partly due to the high number of French stakeholders who took part in the survey, which saw a total of 1,300 participants. Of these, just under 460 answered the question of which technically-qualified judges they would like to see at the UPC.

As such, Stephanie Michiels came top with 6.1%. Alexandre Lebkiri and Oliver Tischner followed with 5.7% each. But many other French, Italian and German candidates received significantly fewer votes.

Technical judges hold sway

Once again, the result shows great interest for the UPC in France. After all, Paris will host one of the Central Divisions. There is even the possibility that the former London parts of the Central Division, namely the pharmaceuticals and chemicals parts, will also end up in the City of Light.

Stephanie Michiels, an engineer, specialises in life sciences. She gained experience as an in-house patent attorney at Sanofi at the beginning of her career. On the other hand, Alexandre Lebkiri’s specialty lies in software patents, among other things, and he advises clients such as Atos and Bull. Oliver Tischner specialises in general mechanics as well as components for the automotive industry, agricultural machinery and manufacturing processes such as 3D printing.

Participants to the survey also mentioned Stephanie Celaire and Emmanuel Potdevin, both from Regimbeau. Gerard Myon and Philippe Blot, both from Lavoix, have also received airtime.

Italy comes in swinging

However, participants also put forward multiple nominations for Italian candidates as UPC technical judges. An example is recognised specialists Andrea Marietti of MGT – Marietti, Gislon e Trupiano and Marco Lampis of Dragotti & Associati. Respondents also recommended well-known experts Claudio Germinario, from Società Italiana Brevetti, and Paolo Rambelli of Jacobacci. Particularly Italian respondents recommended all four.

Andrea Marietti specialises in industrial engineering. Marietti is a technical expert at the Court of Bologna and is highly experienced in patent litigation. Survey participants described him as “one of the best patent attorneys for mechanical patents in Italy”.

Another nomination for the technical judges, Marco Lampis, is a technical expert at the Court of Milan. Survey participants respect his experience in electronics.

Meanwhile, Claudio Germinario has over 20 years’ experience at the EPO Boards of Appeal, where he was a member from 1980 to 2001. He is particularly praised for his expertise in patent litigation in the field of pharma and biotech. One Italian lawyer says, “Among the best prepared patent attorneys for chemistry and biotech.”

Paolo Rambelli of Jacobacci is recommended as a “senior patent attorney with a fine understanding of industrial and pharmaceutical chemistry”, who has “great experience in patent litigation”.

Mixed picture in Germany

Survey respondents threw numerous well-known names from German patent attorney circles into the ring. Whereas the France and Italy vote indicate a preference for a particular expert as a technical judge, German candidates are more diverse and less consistent. Respondents only nominated a few candidates more than once.

Renowned patent attorneys such as pharmaceutical and biotechnology expert Natalie Kirchhofer, and Arwed Burrichter, are among the candidates. Both lawyers reside at Cohausz & Florack. One participant praised the latter as a “life science warhorse”. In addition, Dorothea von Renesse and Max Tilmann, name partners of patent attorney outfit König Szynka Tilmann von Renesse, cropped up multiple times. One survey participant described Max Tilmann as an “experienced patent attorney, qualified for representing cases before the UPC”.

Among the recommended experts, technical judges with experience at the EPO or a national patent court were few and far between. These included Kemal Bengi-Akyuerek, currently a member of the Enlarged Board of Appeal at the EPO. One participant praised him above all for his “excellent steering of cases during oral proceedings”.

Technical judges a tricky question

The answers concerning the technical judge positions shows interest in the appointments. But compared to the answers regarding the legally-qualified judges, where respondents expressed firm preferences, it is clear that very few of the patent attorneys have the cross-border visibility enjoyed by the legally-qualified judges at national courts.

For example, the technical judges at the German Federal Patent Court and the EPO Boards of Appeal are also less renowned on the international stage.

JUVE Patent is not yet aware which technical judges and patent attorneys have put themselves forward for a UPC judgeship. According to the chairman of the Preparatory Committee, Alexander Ramsay, the committee still has around 1,000 applications from judges. Experts believe that around two-thirds of applications are likely to be for technical judges. Of these, it is expected that a high number are from patent attorneys.