Who can be a UPC judge? Thoughts from a UK Patent Attorney perspective

The IPKat team is drawn from a variety of professional backgrounds. However, this particular moggy is a UK and European patent attorney. He has recently been mulling over some issues relating to UK registered patent attorneys in relation to the UPC Agreement.

What has particularly got this moggy thinking today is the question of what judicial office might be open to a UK registered patent attorney. Readers will recall that he posted last week on the call for expressions of interest for technically and legally qualified judges. It seems fairly self-evident that a UK registered patent attorney could fulfil the requirements to be a technically qualified judge ("a university degree and proven expertise in a field of technology" according to Article 15(3) of the UPC Agreement, since the other requirements of Article 15 can apparently be met by training according to Article 2 (3) of the Statute of the UPC [the text of the Statute can be found following that of the Agreement, at the same link]).

But what about being a legally qualified judge?

The key requirement to be a legally qualified judge according to Article 15(2) of the UPC Agreement is that the candidate should possess "the qualifications required  for appointment to judicial office in a Contracting Member State". The IPKat has received from a mammalian correspondent of a different species an argument that UK registered patent attorneys fulfil these requirements.

The Judicial Appointments Order 2008 in combination with Sections 50 and 51 of the Tribunals, Courts and Enforcement Act 2007 renders UK registered patent attorneys eligible for certain judicial and quasi-judicial office.  Is sufficient to allow a UK patent attorney to be a legally qualified judge of the UPC?  What do readers think?

Merpel wonders whether in any event there would be any desire among the UK patent attorney profession to become a legally qualified judge, or whether a UK patent attorney in any case would likely be more interested in being a technically qualified judge. She recalls from the IPKat's earlier post here that technically qualified judges have a wider range of other employment options open to them if they wish to work part time at the UPC.

Commentators on the earlier post have correctly pointed out that Art 149a(2)(a) EPC allows the Administrative Council of the European Patent Office to permit EPO Board of Appeal members to "serve on a European patent court".  The IPKat recalls however that the type of court envisaged when this was inserted into the EPC 2000 would have included non-EU members of the EPC, quite different from what is now planned to occur.  Presumably if the Administrative Council does decide to permit this, then BoA members will in general need to be (part time) technically qualified judges - if they seek to be (part time) legally qualified judges then they will additionally require individual dispensation from the Administrative Committee of the UPC according to Article 17(2) of the UPC Agreement.

Another question that this Kat has been mew-sing, which is perhaps a wider point, concerns rights of representation at the Unified Patent Court. It seems clear that a UK registered patent attorney is "authorised to practise before a court of a Contracting Member State" [the Patents County Court]  as required by Article 48(1) of the UPC Agreement, and therefore that a UK registered patent attorney is a "lawyer" under the terms of the UPC Agreement. Therefore, UK registered patent attorneys should have the right to practise before the UPC without any further qualification.  This Kat has, however, noticed that the rules in this respect (in particular rule 286 on evidence of the right to practice and rule 287 on privilege) seem to confuse the issue which is clear in the Agreement and employ definitions stemming from Swedish practice ("persons possessing a law degree (jurist) who are authorised by the Swedish Patent Attorneys Board or equivalent body in a Contracting Member State") which are not applicable to the UK.  This Kat hopes that these issues will be sorted out in the next draft of the rules of procedure.

Who can be a UPC judge? Thoughts from a UK Patent Attorney perspective Who can be a UPC judge? Thoughts from a UK Patent Attorney perspective Reviewed by Darren Smyth on Saturday, September 28, 2013 Rating: 5


  1. I am guessing that "the qualifications required for appointment to judicial office in a Contracting Member State" should be understood as (the formal) qualifications required for appointment to any judicial office in that Contracting Member State, not just a particular patent-related judicial office. So in my view compliance with paragraph (4)(b) of Section 50 ("holds a qualification that under section 51(1) is a relevant qualification in relation to the office, or other position, concerned") is not sufficient.

    I would also not expect technical judges from the Bundespatentgericht to fulfill the requirements of a "legally qualified judge", even though they obviously qualify for appointment to a judicial office in Germany.

    In many of the Contracting Member States lay judges may be appointed to certain judicial offices. It seems clear that Germans fulfilling the criteria for acting as a lay judge ("lay judges must be citizens that have not been convicted of, or be under investigation for, a serious crime") do not thereby fulfill the requirements of a "legally qualified judge".

    Of course I might be proven wrong on this.

  2. Myshkin, yes, but which positions are relevant? In England & Wales, each judicial position has its own entry requirements - see Schedule 10 to the Tribunals, Courts and Enforcement act referred to the article. There are a bewildering array - effectively the two relevant entries in the English patent courts are in paragraphs 9 and 13.

    Also, in England & Wales, effectively the majority of the adult population is entitled to sit as a magistrate in the Magistrates' Courts; it is clearly a judicial position and hence on the wording of the UPC statute any Tom, Dick or Harry could apply, but I agree that the powers that be are unlikely to interpret the statute in that way.

  3. But what does "proven expertise in a field of technology" require for technically-qualified judges? Is a first degree in a science plus a career as a patent attorney enough, or does it require more than that?

  4. Myshkin, yes, but which positions are relevant?
    I was thinking of paragraph (4)(a) of Section 50, but it seems that does not tell the whole story either.

    I suppose most if not all courts in Contracting Member States include at least one judge who meets the requirements for that position on the basis of completed legal studies and possibly further general legal training or experience and not on the basis of any non-legal expertise. The legally qualified UPC judges are clearly intended to fulfill this role within the UPC. So national "technical judges" may really be "judges", but it would surprise me if they could serve as "legally qualified" UPC judge.

    It is probably too much to ask that a legally qualified judge is eligible in his home country for each and every judicial office. If that were the case, the UPC Agreement would have copied the formulation from the EU treaties: "The Judges and Advocates-General of the Court of Justice shall be chosen from persons whose independence is beyond doubt and who possess the qualifications required for appointment to the highest judicial offices in their respective countries or who are jurisconsults of recognised competence".

    I am now guessing that it is sufficient to be qualified for at least one judicial office as "the legally trained judge".


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