UPC Judges Announced
On 19 October, the Unified Patent Court (UPC) confirmed the appointment of a total of 85 judges who will sit in the various divisions of the court when it starts (most likely on 1 April 2023). The UPC also elected a Presidium, which will start working on practical aspects of the judicial operations of the court in November.
The appointment of judges, and allowing sufficient time for their training, has been one of the key factors underlying the timeline for the court becoming operational and these appointments are in line with the recently-published roadmap which set out the 1 April 2023 start date.
The appointed judges include 34 legally-qualified judges who will take up positions at the Court of Appeal, the Central Division and the Local and Regional Divisions as indicated. Alongside these is a pool of 51 technically-qualified judges who will primarily sit in the Central Division, but may also be appointed to any of the other divisions depending on the requirements of individual cases and the requests of the parties. All judges are appointed for a term of 6 years and may be reappointed at the end of that term.
The legally-qualified judges appear to be entirely drawn from existing national judges in the contracting states who specialise in patent cases. Many of the names will be familiar to those who have been involved in patent litigation in, for example, Germany, France, the Netherlands or Italy. The appointment of Klaus Gabrinski as the President of the Court of Appeal was also largely anticipated.
It is promising that the UPC has managed to attract a large number of “big names” from the patent judiciary across Europe. Indeed the huge experience and reputation brought by these judges is likely to help dispel some of the scepticism as to the standards that can be expected from the new court when cases start to be heard.
Whilst the legally-qualified judges are listed in association with respective Central/Local/Regional Divisions, they will not sit exclusively in those divisions. Rather the listed judge(s) in the local/regional divisions are likely to sit on all cases in that division and will be joined in a multi-national panel of three judges by one or two further judges from the “pool” comprising all other judges of the Court (and possibly by a further technically-qualified judge). In local divisions which have a high workload, the additional judge may serve at that division on a “long term basis” if this is necessary for the efficient functioning of the division. For other divisions, the additional judge(s) will be allocated on a case-by-case basis. The allocation will take account of legal or technical expertise, linguistic skills and relevant experience.
The current list of appointments has only the minimum level of judges required for each of the Local and Regional Divisions. Indeed, the Copenhagen Local Division has no judge appointed, and the UPC website indicates that they are conducting “targeted” recruitment for certain positions (there is also a “gap” in the Munich part of the Central Division). According to the UPC Agreement, a Local Division must have a legally-qualified judge who is a national of the country in which it is based. If certain Local or Regional Divisions experience a heavy workload, further appointments will presumably be made in order to ensure that sufficient capacity exists.
In the Central Division (which will be largely responsible for cases in which the invalidity of the patent is in issue), the panel will be made up of two of the indicated legally-qualified judges (of different nationalities) and a suitable technically-qualified judge.
The Court of Appeal will sit in a multinational panel of five judges, comprising three of the indicated legally-qualified judges and two technically-qualified judges from the appropriate group.
The UPC agreement requires that legally-qualified judges cannot engage in any other occupation apart from exercise of the other judicial functions at national level. It is therefore expected that many of the legally-qualified judges will continue to sit in their national courts, particularly those who are in Local/Regional Divisions which may have lower workloads, at least in the initial stages. Over time, if the number of cases heard by the UPC, or by particular divisions of the UPC, increases, such dual roles may become difficult to maintain and the legally-qualified judges may be required to devote all of their time to the UPC.
The role of the technically-qualified judges in the UPC is to sit alongside their legally-qualified counterparts and provide expertise in the particular field of technology of the patent in issue. These judges are therefore placed in broad technical categories, although their selection for individual cases may result in more technically-specific criteria based on their knowledge and experience.
Notably, the technically-qualified judges are almost entirely currently working as European patent attorneys. Whilst a few appear to have additional legal qualifications or have acted as court-appointed technical experts (a role which is likely to be similar to the role of the technically-qualified judge at the UPC), most do not. This reflects the specialist nature of the UPC and the need for the divisions of the UPC to be able to draw on technical, rather than legal, expertise from these judges. This is also an indication that the arguments in most cases before the UPC are likely to be as much technical as legal (if not more so), and thus parties are likely to be represented by patent attorneys with significant technical expertise in the field of the patent and the court will need to be able to engage with, and decide on, these technical questions.
Technically-qualified judges can either be full-time or part-time judges of the UPC. Whilst full-time judges are not allowed to engage in any other occupation, part-time judges are permitted to do so provided that there is no conflict of interest. There is no indication of the full-time or part-time status of the appointed judges but, at least at the outset, it seems likely that all technically-qualified judges will be appointed on a part-time basis and will continue to work for their existing firms. This may change if the demands on the court increase.
Where are the EPO Board of Appeal members?
A quick comparison of the list of UPC judges and the current members of the EPO’s Boards of Appeal shows almost no overlap. This is interesting as, when the UPC agreement was first published, the similarities between the EPO Boards of Appeal and the UPC divisions were notable: three-member panels, mixtures of technical and legal members, and the multinational composition of panels are all common features of the two systems. The EPO’s Boards of Appeal also have huge experience in deciding cases concerning patent validity under the identical laws that the UPC will apply.
Article 149a(2) EPC explicitly makes provision for the possibility of members of the Boards of Appeal to serve on “a European patent court”, provided that the EPO’s Administrative Council decides that it is acceptable. However, there has been no such decision from the Administrative Council, with the effect that current Board of Appeal members would have to make a binary decision between remaining in their current position or becoming UPC judges.
With the appointment of judges (nearly) complete, the main task ahead of the Preparatory Committee is the finalisation of the case management system, following which Germany can deposit its instrument of ratification. This is expected to occur in December this year, causing the “sunrise period” for opting existing European patents out of the jurisdiction of the UPC to start on 1 January 2023, ahead of the court itself starting to accept cases from 1 April 2023.