UPC kickstarts judicial appointments
The Unified Patent Court (UPC) has started to select judges in a move welcomed by lawyers as a major step forward for the realisation of the long–awaited single IP enforcement system.
The UPC’s administrative committee received more than 1,000 applications from judges across Europe.
"The list of the most suitable candidates shall include at least twice as many candidates as there are vacancies, ranked after their qualification," explained Wouter Pors, partner at Bird & Bird.
"The UPC advisory committee has to send a list of the candidates to the administrative committee that contains candidates. The administrative committee then has to make a selection. To my understanding this list was submitted to the administrative committee for its 8 July meeting. The selection will then be made in the coming weeks or months," he added.
Andreas Wietzke, partner at Mathys & Squire said: “The letters being sent out from now onwards will give the UPC what a court needs most—judges. The UPC has been on the horizon for decades but now finally is taking shape.”
Darren Smyth, partner at EIP, noted that choosing the judges was important progress, but cautioned there are more steps to take before the judges are appointed.
“Obviously first the candidates need to accept the offer (and if not then offers will need to be made to other candidates), but then the service regulations also require a medical examination, before the official appointment can be made. Only then will we find out who the judges actually will be, and that is what everyone wants to know,” he said.
“If all goes smoothly, training of the judges in the UPC procedures is planned for September—this is really important because the system is as new for them as it is for the users,” added Smyth.
Background
First agreed in 2013, but beset by numerous delays, the new court will serve as a single point of contact for litigation of IP infringement within participating countries—which could potentially save businesses substantial legal costs.
In January, Austria deposited its instrument of ratification of the Protocol for the Provisional Application of the UPC (PAP) with the European Council, meaning the PAP immediately entered into force.
A month later, the administrative committee appointed its advisory committee, which was then tasked with recruiting UPC judges.
The committee breaks this down into five full-time and 35 part-time legally-qualified judges, as well as 50 part-time technically-qualified judges.
Concerns over judges’ expertise
But as the letters wing their way to the successful candidates, concerns over the judicial appointments remain.
Last year, Rudolf Teschemacher, consultant at Bardehle Pagenberg, told WIPR that: “the original application period dates back to 2014, forcing the preparatory committee to launch a top-up campaign in 2019. He queried whether these preparations had provided an appropriate basis for the appointments to be made.”
Commenting on this concern, Smyth acknowledged that questions over expertise will remain until the judges are named.
“There is a broader concern that the judges might not be particularly expert in patent law (even though Art 15 of the UPCA requires ‘proven experience in the field of patent litigation’) because quite a few countries don’t have that much patent litigation. The extent to which this may be justified will become evident once we know who the judges actually are,” he mulled.
Meanwhile, Leythem Wall, founding partner at Oxon IP, noted that while the appointment of judges was effectively put on hold due to the uncertainty surrounding Brexit and the German constitutional challenges, there have been a large number of applications for positions as judges in both ‘windows’, so “a shortage of candidates applying will not be an issue”.
This optimism is echoed by Finnegan partner Nicholas Fox, who emphasised that the “top-up” window in 2019 had been absolutely vital in scouring for high-quality judges.
“Yet it was three years ago, which is a long time. But for most candidates, this is not going to be a problem,” he predicted.
A ‘haven for patent abuse’?
According to Patrick Oliver of patent owners’ coalition IP2Innovate, judges at the incoming court must consider the threat posed by patent assertion entities.
The UPC Rules of Procedure provide judges with the means to order EU-wide injunctions. Should such injunctions be handed down automatically upon findings of patent infringement, all it would take would be one patent infringement claim to force a complex product from the market, he warned.
In an article for WIPR, he outlined certain criteria that should be part of the judges’ training to prevent Europe from becoming “a haven for patent abusers”.
“First, the importance of assessing the impact of an injunction in light of the actual harm to the patent owner of not granting an injunction should be affirmed. Second, there is the problem dubbed the ‘injunction gap’”, he wrote.
This occurs in countries including Germany, where there is a system of bifurcation, meaning that infringement and invalidity proceedings are handled by separate courts in separate proceedings.
In many cases, an injunction decision precedes the patent validity one, leading to products being sometimes removed from the market even though the asserted patent is invalid.
But Wall noted that while bifurcation at the UPC will be possible, the courts’ local divisions can also choose to handle both infringement and revocation proceedings together, and not bifurcate. “Elsewhere, cases initially brought to the central division will also not be bifurcated,” he said.
It’s not obligatory to bifurcate, chimed Finnegan's Fox, who emphasised that “we don't know how popular that option is likely to be” to litigants.
Fox added: “But I have faith that the rules are going to be properly applied. The end result will ultimately come down to the quality of the judges appointed.”
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