Merpel has been thinking a little more about the announcement of recruitment of judges for the Unified Patent Court, and now foresees some unpleasant consequences.
According to Article 17(2) of the Unified Patent Court Agreement:
"Legally qualified judges, as well as technically qualified judges who are full-time judges of the Court, may not engage in any other occupation, whether gainful or not, unless an exception is granted by the Administrative Committee."According to the selection process document:
"Candidates for part-time legally qualified judges have to request this exception if they wish to remain in private practice. However, no exception will be granted to candidates who serve as members of the Board of Appeal of the European Patent Office (EPO) and who wish to remain members of the Board."On the face of it, this only applies to legally qualified judges, but this is because only legally qualified judges need dispensation to have another occupation; technical judges can do so without dispensation, subject to the conflict rules.
In fact, Merpel understands that no EPO Board of Appeal members will be permitted to serve part time as UPC judges (ie while remaining employed at the EPO). Article 149a(2) EPC states:
The Administrative Council shall be competent to decide that:This clearly envisaged (while not finally deciding the matter) that Board of Appeal members could serve in a court such as the UPC, and so presumably that the drafters of the EPC 2000 thought that this would be a good idea.
(a) the members of the Boards of Appeal or the Enlarged Board of Appeal may serve on a European patent court or a common entity and take part in proceedings before that court or entity in accordance with any such agreement;
(b) the European Patent Office shall provide a common entity with such support staff, premises and equipment as may be necessary for the performance of its duties, and the expenses incurred by that entity shall be borne fully or in part by the Organisation.
However, the Administrative Council has taken no decision to allow members of the Boards of Appeal to serve as UPC judges, and Merpel understands that there is no plan to do so. What she is not sure about is where the pressure not to allow BoA members to also serve on the UPC has come from. She has heard that the EPO President is against the idea, as he does not wish to relinquish any EPO employees. Presumably, the Administrative Council is not in favour, otherwise they could take such a decision irrespective of the wishes of the President, but it seems that they have chosen not to. But she also now wonders whether the Preparatory Committee is also not in favour.
This seems to be a great mistake. The Boards of Appeal represent the largest concentration of expertise in adjudicating contentious patent disputes in Europe, with a proven track record of doing so in a transnational manner. An early decision to potentially second a significant number of Board of Appeal members could have allowed this resource to be used for the benefit of the UPC, while allowing significant extra flexibility for the manpower of the UPC, whose caseload in the initial stages is unknown and unknowable. The alternative that seems to be now being pursued of recruiting a set number of judges risks over- or under-staffing.
Perhaps the Administrative Council and the EPO President are concerned that the backlog of cases at the EPO Boards of Appeal (currently estimated at around 8000 cases) can only worsen if some Board members go off to be UPC judges part time. This is an issue of concern, but it seems to Merpel that the solution is not to prohibit the Board members from being UPC judges part time, but rather to increase the manpower of the Boards to compensate. The Boards of Appeal are large enough to accommodate some flexibility in staffing levels, much more easily than the fledgling UPC.
Merpel has heard from a judicial source that it is undesirable for a UPC judge to be an EPO employee, because an employee of the granting institution should not be involved in the litigation of a patent granted by that institution. This is piffle (or perhaps she should say "nonsense on stilts"). The Patents Court has no difficulty being the forum for appeals from decisions of the UK IPO as well as the first instance litigation venue. There may justification for a rule that the same person cannot hear a case related to the same patent at the EPO and the UPC, but there is no justification for a blanket ban on the dual role of UPC judge and BoA member.
Merpel has now realised a further problem for the Boards of Appeal themselves. As she reported earlier, they are currently significantly under strength. If BoA members are not allowed to serve part time on the UPC, it must be very attractive to instead resign from the EPO and go to the UPC full time. This is a time of potential significant upheaval for the Boards, with likely changes to location, career structure, independence, and work expectations. The UPC must look like an attractive escape route. But when there are already a large number of unfilled places, any significant exodus at this time could irretrievably lose expertise in some technical areas. Such damage could take years to restore. Moreover, it will result in precisely the outcome (increase in backlog of appeal cases) the avoidance of which is presumed to lie behind not releasing Board members to serve part time at the UPC.
Merpel has no expectation of being heeded. But there is (just) time to reverse the decision, if action is taken now, and to pursue the sensible course of restoring the EPO Boards of Appeal to full strength and allowing their members to act part time as UPC judges.