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25 June 2015AmericasPaul England

The devil in the judicial detail

It is a concern that has been voiced many times during the long genesis of the Unified Patent Court (UPC): how will the new court ensure consistent and high quality decision-making across its many divisions?

Potential users of the system, patentees in particular, fear that an inexperienced judge could make a bad decision about the validity of a patent or its infringement, a decision which would take effect across all contracting and ratified member states of the UPC.

At April’s Fordham IP Conference in Cambridge, UK, this issue occupied much of a discussion I chaired between Johannes Karcher, head of the task force for the unitary patent and UPC, Robin Jacob, chair of the advisory panel on the education and training of judges in the UPC, and English High Court judge Justice Colin Birss, who is providing patent law training to potential UPC judges.

The starting point of the discussion was the structure of the UPC judiciary.

This is organised around a ‘pool’ of judges. It is from this pool that judges will be drawn to sit on the local, regional and central divisions of the Court of First Instance of the UPC.

The pool is composed of both legally qualified and technically qualified judges. The role of the technical judges is to assist the legally qualified judges with the technical subject matter encountered in a typical patent action.

Beyond that, their precise role is currently unclear. The technical judges are the minority members of the judicial panels of the UPC, and in infringement cases there will be no technical judge at all. Instead, it is the legal judges who will dominate decision-making in the first instance court, and so it is necessary to look at how they are organised.

In regional and local divisions of the court, panels will contain a mixture of legally qualified judges who are local or foreign to the country where the division is located (‘local’ meaning judges from the member state hosting the division in question, and ‘foreign’ meaning judges from other member states).

The proportion of local to foreign judges on a local division panel depends on the frequency with which the member state has historically handled patent cases. A local division that has a record of dealing with an average of 50 or more cases per year over three successive years has a panel consisting of two legally qualified local judges and one legally qualified foreign judge, all allocated from the pool.

The local divisions that have averaged fewer than 50 cases over three successive years will have panels consisting of one legally qualified local judge and two legally qualified foreign judges, again allocated from the pool.

By contrast, the panels of the regional divisions will always be occupied by two legally qualified judges from the contracting member states hosting the division, and one foreign judge.

The central division is different. Here, the panels consist of two legally qualified judges from different contracting member states. There are no rules governing how many of the legally qualified judges must come from the contracting member state hosting the section of the central division in question.

The judges must, according to the UPC agreement, be recruited from across the contracting member states to the UPC. To be eligible as a legally qualified judge does not require a candidate to have been a judge in their home member state. Furthermore, because it is recognised that some member states do not have as much experience of dealing with patent disputes, candidates are not even required to have a background in patent matters.

In fact a number of potential candidates are already receiving training in patent law in Budapest, Hungary. At the other extreme, many legally qualified judges will come from member states where patent actions are commonplace and in which they have been practising patent law their entire careers. The pool mixes together all these judges, with their different skills, experience and understanding of patent law.

“There are no rules governing how many of the legally qualified judges must come from the contracting member state hosting the section of the central division in question.”

The requirement for two foreign judges on a local division situated in a member state with less patent experience creates the opportunity to place more experienced judges in the majority with a less experienced judge.

In particular, there are many judges and practitioners from Germany, the UK, the Netherlands and France who have patent experience. The expectation is that these experienced judges, as well as other patent practitioners, will sit on cases in the UPC. They will share their expertise sitting as the two foreign judges in the divisions of the less experienced member states. The less experienced local judge sitting with them in the division will learn from them. They might well do so quickly.

Justice Birss remarked during the discussion that the potential judges currently being trained on patent law in Budapest are showing an impressive ability to pick it up. Even so, as Karcher put it, the centre of gravity of the court will in all likelihood be in divisions of member states where there has been a lot of patent experience (divisions where two experienced local judges sit with a less experienced foreign judge). So, for most cases, he explained, we should expect to get very experienced judges.

That is the local divisions. What about the regional divisions?

Which judges?

Little is known of the countries that are expected to join regional divisions, other than that Sweden will take part in the Nordic-Baltic regional division of the UPC together with Estonia, Latvia and Lithuania. However, this means that Swedish judges, who are experienced in patent matters, may be expected to bring their influence to bear with the less experienced patent judges with whom they share the division.

This is the theory. However, the real challenge for those implementing the UPC goes further than this. It lies in the detail governing how particular judges will be assigned to a particular court in a particular place. Will the same judges remain on a panel in, say, Belgium, indefinitely, or will they be different for every case? This has an important bearing on the consistency with which patent law is applied in the UPC: if the judges do not circulate, divisions could develop their own idiosyncratic approaches to patent law.

This does not mean that these courts will be unpredictable—lawyers will quickly learn the approach of a particular division—but it would promote the sort of forum-shopping between member states that the UPC is supposed to prevent. A related question is whether some judges with particular experience in dealing with validity matters will be earmarked for the central division (where the majority of revocation actions will be heard).

These issues involve complex logistics for those working behind the scenes on setting up the UPC. Jacob remarked during the discussion that even the questions of how many judges to appoint at the beginning and how many will be part-time are huge ones, and Justice Birss reflected on the difficulty of getting a system of mixing judges to work in practice.

There is nothing in place to deal with this at the moment. One possible solution would be to put the UPC judges on circuit. But would the administration of the court be able to manage this?

Despite this uncertainty, one important point is clear: the allocation of judges to a particular division will not be random. Instead, decisions will be made according to the expertise of the judge in question.

Karcher explained that there are two broad categories of UPC division in this regard: in divisions with a high caseload, the panels of judges selected are likely to remain quite stable, so that parties to cases in those divisions will have a good idea of who it is they will get; in the divisions of member states where cases are less frequent, two experienced patent judges will need to be flown in to sit together on the bench with the one local judge.

In these cases in particular, the right people will be picked for the individual cases by the president of the first instance court.

What is the lesson from the discussion?

While the structure of the UPC is designed to provide for experienced and consistent decision-making, the devil lies in the administrative detail: those responsible for implementing the court know very well that good decision-making requires particular judges to be allocated appropriately and flexibly to particular cases.

What remains, at the moment, is to work out how exactly this will be achieved.

Paul England is a senior associate at  Taylor Wessing in London. He can be contacted at: p.england@taylorwessing.com

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