The UPC - Hopes and Headaches
October 21, 2022
October 19, 2022 was a special day. It was the first day when the UPC website finally announced the names of the UPC's first 85 judges. JuVe's journalists quickly did their homework and provided further information on the origin and previous careers of these judges here. The overall picture is that the UPC recruiters obviously - and fortunately - prioritised relevant experience and quality in their choice of the judges over any other considerations. In regard to Germany, I think it is fair to say that the quality and experience of the judges picked for the UPC is outstanding - we clearly sent an A-team. I have heard and read similar comments from colleagues from other countries with a significant number of IP cases. All in all, this looks very good. Concerns about quality of the judges of the Unified Patent Court appear unfounded, at least for now, and the new court has indeed deserved a lot of confidence to begin with. Congratulations to all new judges and to their consummate recruiters!
That said, let me pour some water into the wine. The concept of part-time judges gives me a bit of a headache in the context of a court as important as the Unified Patent Court.
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My understanding is that many legal and all technical UPC judges will only work in part-time positions at this moment. While I completely understand why this solution was chosen for the initial stage of this court when it is pretty much any one's guess how many cases the Court will actually receive per year, it does not seem to me to be a sustainable solution in the long run. What I am mainly concerned about in this regard are those technical judges who are at the same time patent attorneys (and mostly partners) from IP law firms or from industry, i.e. from entities that inevitably have their own economic interests. The percentage of technical part-time judges in private practice is quite significant:
Biotechnology: 6 of 8
Chemistry/Pharma: 6 of 10
Electrical Engineering: 5 of 9
Mechanical Engineering: 11 of 16
Physics: 5 of 8
Most of them come from renowned and relatively big IP law firms or from big companies such as Airbus, Bose, 3M, Agva-Gevaert, Lundbeck, Orange, Nokia et al. This is understandable, as technical judges are actually a fairly rare species in many countries and experienced patent attorneys are most akin to them. It is also true that the part-time judge model has been practised in Switzerland for quite a while now, even though I am not completely convinced of its success. Perhaps I experienced too many recusals, some of them even during a litigation, which is always an unpleasant surprise. Anyway, if I am informed correctly, only Germany, Denmark and Sweden have technical judges in a stricter sense, so you would not expect technical judges to come from important UPC countries such as France, Italy and the Netherlands.
Before I continue, I should probably disclose that I have deliberately not applied for a position at the UPC for myself, even though I of course felt the attraction of being part of this exciting new European court. One of the considerations that had me decide against applying was the concern that I would probably have to recuse myself in a substantial chunk of or even in the majority of interesting cases for which I might have technical competence. This is because my firm is big enough that there is a certain likelihood that we have represented one of the parties, or their affiliates, licensees or the like, some time in the past. Even if this was not the case, I would still be concerned about economic connections between the parties of the lawsuit and clients of my firm. In addition I also worried about myself: would I really be able to act as an impartial judge in a case where one of the parties was represented by a (patent) attorney colleague who just recently happened to win an important case against me and my client for no good reason (because my client was in the right, of course :). Vice versa, how would the (patent) attorney of this party view my judicial independence in such a scenario, particularly if he then happens to lose his lawsuit before me as a judge? There are surely many scenarios where concerns like this might come up. And even if I chose to retire from my firm and only work as a part-timer for the UPC, is that enough, or should I better completely sever all economic and professional connections to my firm in order to appear absolutely neutral?
The rules of compliance for the (part-time) judges of the UPC and, even more, their implementation in practice will therefore of utmost importance. I hope and expect that the court will be mindful that its reputation must be beyond reproach, and that suspected partiality is about the worst that could happen to it. I could therefore imagine that there will be quite a lot of cases where judges will have to (or should better) recuse internally when they are asked to take on a certain case. Otherwise, i.e. if the judges do not take the fear of suspected partiality serious enough, ugly and time-consuming discussions between the parties and the court could ensue (in the worst case), which in the end only prolong the proceedings and help no one.
Fortunately, some of the newly appointed technical judges might not face such problems. These include, in particular, (technical) judges who have been and continue to be working in judicial positions in their home countries, e.g. at the German Federal Patent Court. I dare speculate that these technical judges will have to shoulder more cases in the long run than the others, but this remains of course to be seen.
For now, we can only wish the Unified Patent Court a good start some time in 2023 and the best of success in resolving complex patent matters on a European scale in a fair, balanced and efficient way.
Tags:
partiality,
UPC
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Attentive Observer
Dear Thorsten, You are not the only one having concerns about part-time judges. In other publications on this blog, Concerned observer has brought forward similar concerns. http://patentblog.kluweriplaw.com/2022/10/21/klaus-grabinski-and-florence-butin-presidents-of-the-unified-patent-court/ As far as the question of part time judges is concerned, I would like to add the following. “Marketing” their judicial roles by part-time judges should be absolutely prohibited. In view of the part-time participation of judges, a high number of recusals of such part-time judges is to be expected. It is thus not only necessary to provide very strict rules governing conflicts of interest, but also a mechanism by which recusal of legal and technical judges will be possible. It is doubtful whether the provisions of Art 7(3-5) of the Statute are sufficient in these respects. Art 7(3) deals with self-recusal or a decision of the chair of the court of first instance or the court of appeal considering that a judge should not sit or make submissions in a particular case. Art 7(4) deals with recusals and does not say much. Art 7(5) provides that any difficulty arising as to the application of Art 7 shall be settled by decision of the Presidium. At least at the boards of appeal EPO there are much clearer rules as to recusal. in any case the decision is not left to the chair or the Praesidium of the boards of appeal. It is also worth noting that according to Art 10 of the Statute a judge can be removed from office by decision of the Praesidium without the judge being offered any means of redress, besides the fact that he can be heard (which is a bare minimum). In how far such a rule is conform to the constitution of numerous UPC contracting states remains to be seen. In IP matters there very few countries in which part time judges are acting at least in first instance and not in appeal. One is the UK, the other one is Switzerland. Those are two countries which are not participating in the UP/UPC system. In part of France, commercial chambers are also using lay judges, but not for matters relating to validity of infringement of IP rights. Here again, it remains to be seen in how far the status of part-time judges is conform to the constitution of numerous UPC contracting states. It is possible that Belgium could also accepts part-time judges, but I am not sure. There is one former technical member of the boards of appeal of the EPO named in the pool of technical judges. One future former technical member has also be named in the pool. At least those two should have less conflicts of interests as part-time judges. As far as I can see, there are no former legal members of the boards of appeal which have been selected. It is ironical to see that most of the RPUPC have been inspired by the British system. And the UK has withdrawn its participation. Would it not have been wiser introduce some longer time limits as short time limits increase the pressure and costs, especially for European SMEs which are meant to benefit from the UP/UPC system. The UPC might be starting. We should however not forget the shoddy legal basis on which the whole UP/UPCA is standing. The UPCA has never been vetted by the CJEU, allegedly because nobody thought it! Even if the CJEU might not want to shake the whole construction, problems might occur when UPC decisions will have to be executed in EU/EPC member states. Too many manifest problems have been swept under the carpet, Art 7(2) UPCA to name one. It will be interesting to see how members of the Munich and Paris sections of the central division will justify their competence in cases relating to life sciences. In view of your professional experience, you are probably very much interested in this matter.
Max Drei
Two thoughts: 1. England has judges at first instance who are "on secondment" as it were, from their "day job" as a barrister within chambers. Nobody supposes that they have a conflict of interest or are biassed. But it is different when a judge is on secondment from a big international patent attorney firm with long term client relationships with a high proportion of the world's most innovative mega-corporations. There, the potential for conflicts of interest and divided loyalties is exponentially higher. Can we dismiss it as unecessary worry? The enthusiastic "marketing" efforts of the firms from whom the judges are drawn is prompting more cynicism. A ban on it sounds fine but in practice will, I suspect, achieve precisely nothing. 2. Some of us were cynical from the get-go about the usefulness of the UPC to anybody other than the mega-corporations and their fancy international private practive legal advice firms. Have we seen anything in the last few months to reduce that cynicism? I'm not aware of anything. On the contrary, sorry to say. My feelings of cynicism just got boosted.
Spezlwirtschaft anyone?
I would go a step further here: The head of IP of Airbus is designated as a technical judge. So Airbus will not be able to be a party in proceedings before the UPC. After all, when judges decide about a case where a party is the employer of their colleague, who would think they are impartial? And the UPC judges who are at the German courts or the patent office will also have to recuse themselves from cases with Airbus in their "main" jobs, I think... Similarly, when a patent attorney is a technical judge, I don't think that his patent law firm partners can practice before the UPC. After all, again, the UPC judges would not (appear to) be impartial, when a partner of their colleague is working on a case... So, Mr. Bausch, I think your decision is good, you can still act before the UPC (unless one of your partners is a judge there?)!
Attentive Observer
Dear Max Drei, The cynicism is not coming from those having a critical view on the UP/UPC system, but from the staunch supporters of said system. They want to push their vision of patents and their (ab)use down the throat of European society. The best example of that cynicism is to claim that the UP/UPC system is for the benefit of the European industry and especially European SMEs. This is a blatant lie! It is for the benefit of “mega-corporations and their fancy international private practice legal advice firms”. In a French legal publication one of those supporters, Mr Casalonga, had the nerve to call those not supporting the UP/UPC system liars, hypocrites and against progress. Can you get less cynical than that?
Adam Brown
That was the same criticism for ISDS tribunals, judges in the morning, lawyers in the afternoon. Boosters will find a way to argue both jobs are compatible.