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.

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.


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13 comments

  1. 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.

  2. 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.

  3. 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?)!

  4. 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?

  5. 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.

    1. ISDS “Tribunals” are actually arbitration chambers. They are acting in case of differences between a state and an investor. They are dealing on a private level.
      It does thus not matter whether the arbitrators are lawyers in the morning and “judges” in the afternoon.

      In view of their special character ISDS are as such a disgrace and any government accepting that they can intervene should be sent to oblivion.

      If I am not wrong, this is one of the reasons why CETA is not yet ratified by many countries!

      By the way, the UPCA has foreseen two arbitration chambers, one in Ljubljana and one in Lisbon. Who will be the arbitrators sitting in those chambers?

      We might have there the same disastrous situation as in ISDS arbitration?

      Another reason why the UPCA is not something to look forward to it!

  6. In the Netherlands the principle of ‘substitute’ judges is well known and also the specialized patent courts, both the first instance and the appeal court, have recruited in many, if not all cases judges coming from the specific field of interest. In 2013, however, it was decided that the courts should no longer employ persons that were still professionally active (and which possibly also could show up before the courts of which they were part). So this meant that practicing lawyers and patent attorneys were no longer able to sit on the court, unless they refrained from their active jobs, I.e. they should remove themselves from the list of representatives.

  7. Why on earth is it necessary to have part-time judges?
    Either the people are judges or are lawyers/representatives! But not both at the same time!

    1. Why must there be part-time judges? I don’t know but I have a guess. The proponents of the UPC want it to be a success from the outset. So they need top quality judges, persons who are not going to be bamboozled by the top quality law firms employed by the mega corps doing the litigating at the UPC, persons who reliably can gallop at a good lick through the thousands of words of any one case, who can immediately understand the content of a case and who at the end of it all can write a persuasive reasoned decision that commands general acceptance, not ridicule

      Where to find such persons? Only in top positions in the patent litigation industry.

      But how can such persons be persuaded to resign their current exalted and lucrative situation and volunteer instead to be a judge in a court system with a current caseload of precisely zero? In England, for being such a learned and eminent judge they get to be given the title “Lord So-and-So”. Nothing like that is on offer here.

      So, these persons are all hedging, all agreeing to be a judge only on condition that they can keep their day job as well. And I say, who can blame them?

      1. Dear Max Drei,

        You might be right with your assumption. But it cannot be left unchallenged.

        Your assumption does however not change the fact that nobody can serve two masters at the same time.

        It is thus to be expected that part-time judges will be faced with a recusal quite often. Even the slightest potential doubt about the independence of a part-time judge should lead to its recusal.

        As far as technical judges are concerned the situation is as follows:
        – In a local or regional court of first instance, the technical judge is the 4th judge of a panel normally only composed of 3 legally qualified members.
        – At the central division 1 technically qualified judge is sitting next to 2 legally qualified members.
        – At the court of appeal a panel will be composed of 3 legally qualified members and to 2 technically qualified members.

        The influence of a technically qualified judge is thus expected to be higher at the central division and at the court of appeal than in a local or regional court. A recusal might be thus more frequent at the central division and at the court of appeal.

        It is also worth remembering that the Federal Constitutional Court has decided in March 2020 that some persons may be acting as judges for a given length of time, but not part-time. However, there are two conditions to be fulfilled: they have to be civil servants for life time and cannot be reappointed. It is difficult to reconcile those conditions with part-time judges, whether legally or technically qualified. Only judges serving for their life time in a national court could therefore be appointed as part-time judges.

        The notion of part-time judge is thus highly disputable, especially for technical judges. I wonder how this is at all compatible with the constitution of some member states. It is not difficult to foresee that decisions in which part-time judges have taken part will be challenged at a national level about their legitimacy, even at the FCC. In such a situation, the FCC cannot say, as some members did at the time of first complaint, that the plaintiff has no direct interest and its referral should be dismissed at once.

        It might look very pragmatic to involve part-time judges, but the constitutionality of such a participation have never been checked. Another failure of the UPCA.

        How can a tribunal comprising part-time judges be a tribunal of contracting states of the EU when this notion is largely unknown at national level? Another oddity of the UPC.

        Pandora’s box is opening slowly but surely.

      2. Max, if you want to figure out the reasoning for most decisions, just follow the money.

        Thus, another possibility – and, in my view, likelihood – relates to the fact that the UPC will be a self-financing court.

        That is, despite the many, many (dirty) “tricks” that have been deployed in order to boost the UPC’s case load from the get-go, the fact remains that the UPC will find it hard to balance its finances in the short term. The Participating Member States could have addressed this problem by agreeing to cover any shortfalls in the UPC’s formative years. This could have allowed the UPC to recruit all of its judges on a full time basis. However, that would have cost the Participating Member States money, and so was never going to happen. So what alternative solution could be found? It seems that we now have our answer: important principles of judicial impartiality will need to “give” a little in order to accommodate part-time, and hence cheaper, judges … that also happen to be active litigators in the same field.

        Another relevant point is that the UPC does not (at least not completely, and certainly not in the short term) do away with the need for national courts that handle patent litigation field in Europe. The national courts of the Participating Member States will therefore need to retain the same number of judges. This obviously limits the number of UPC judges that could be drawn from national judiciaries.

        In this way, the design flaws of the UPC have led to further sub-optimal compromises. As the UPC started life as a “sub-sub-optimal compromise”, I think that it is safe to say that it is now so badly compromised as to be unworkable (at least in the sense that it will struggle to command the necessary level of trust in judgements that will have very significant economic consequences for the parties involved).

  8. Thorsten Bausch has been right to keep away from becoming a UPC judge, and he is to be thanked for raising the conflict of interests issue.
    Beyond this issue taken in a narrow sense, it is inevitable that UPC decisions will affect business interests of the organisation in which the part-time technical judge works, be it a law firm or a company, especially when a decision involves policy issues, and this will likely be frequent.
    In addition, technical judges will have quite normally policy preferences linked to their background and current position, for example a pro-patentee stance or a strong loyalty to the EPO doctrines or those of other national patent offices.
    Much will depend on the role of the technical judges in the decision-making process of the UPC. If they act in a way similar to court-appointed technical experts and have limited influence on policy issues, their technical expertise will be valuable.

    1. As it is foreseen to have a pool of technically qualified judges, why is it considered necessary to call upon:
      – experts of the court, or
      – even experts of the parties?

      See R 185(1): Where the Court must resolve a specific technical or other question in relation to the action, it may of its own motion, and after hearing the parties, appoint a court expert.

      It thus not to be expected that technical judges will act in a way similar to court-appointed technical experts and have limited influence on policy issues.

      Their technical expertise might be valuable, but at what price?

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