Kluwer Patent Blog

9 comments

1. Mr Grabinski was active in the Working Group that wrote the Rules of Procedure (RoP), should there be a rule of seperation of powers that the executive should not write its own rules?

   1. An interesting point, and one to which I would say that the answer is “yes”.

      In G 1/21, the EBA excluded their Chair, on the grounds that his prior involvement in the making of rules precluded him from ruling on the interpretation of those rules. Sadly, this was not based upon rules governing a separation of powers, but instead upon the fact that the Chair’s rule-making role gave rise to an objectively justifiable fear of partiality.

      It would be extremely disappointing if the UPC did not (at least effectively) enforce a strict separation of powers in what seems to be an equivalent situation.

2. Whilst the level of excitement seems to be growing in certain circles, I cannot help but wonder the extent to which those circles are paying attention to the views of the “average” patent applicant, and of SME applicants in particular.

   There is no doubt that, for many patent holders, the UPC will achieve the precise opposite of what its proponents promised to deliver. That is, it will make patent litigation in Europe:
   i) more complicated (not least by adding a new, completely independent court into the mix of national and EPO instances that will deliver decisions on the provisions of the EPC);
   ii) far less predictable (with uncertainties, including over the applicable law(s) of infringement, being far too many to mention);
   iii) harder to manage (in view of the astonishingly short deadlines); and
   iv) far more expensive for all litigants (except perhaps those that previously would have run multiple, parallel cases in Participating Member States).

   This is before one even considers uncertainties relating to whether the whole set-up is unlawful / unconstitutional (again, on grounds far too numerous to mention).

   Thus, whilst I understand the excitement involved in breathing life into a new system, it strikes me that very little attention is being paid to its extremely serious shortcomings.

   In this regard, whilst I can see that there may have been little choice to do otherwise, the selection of so many judges that will continue their separate employment as patent litigators / attorneys does point to an immediate need for the UPC to establish VERY strict rules governing conflicts of interest. It also begs the question of how the UPC will handle the possibility that certain attorneys / litigators (or their firms) may seek to entice clients by “marketing” their judicial roles. Food for thought indeed.

   1. I share your doubts/objections/concerns.

      The double role of judge and patent attorney/lawyer is of special concern. How can one be certain they they is no direct or indirect conflict of interest or benefit from one role for the other? Some IP law firms are already advertising that their attorneys are on the list of judges, on their website or on LinkedIn…

3. Who are the judges of the UPC section in London?

   1. They Br-Exited.

      Waiting to be moved to Milan I guess.

4. I can only but support the last entry of Concerned observer.

   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. this should have been settled in the Statute.

   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.

   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.

   1. Will there be a listing for all part-time judges of their other jobs, their clients, etc so third parties can check possible conflict of interest?

      1. It is to be feared that it will be like for MPs. Did you ever see a list of the jobs and clients they get income from next to their wages as MPs?
         Did you ever see a list of all the lobbies trying to influence MPs and their contacts with the latter?
         Nope!!
         Why should it be different here?

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