IP Federation urges UPC Court of Appeal to protect in-house counsel's rights of representation in Judge Grabinski letter
Yesterday, the IP Federation - the UK's oldest and most-prominent IP-intensive industry organization - sent a letter to Judge Grabinski (the Unified Patent Court's Court of Appeal presiding judge) urging that the UPC Court of Appeal not establish a blanket prohibition on in-house counsel acting as representatives in the UPC.
The letter - published here - follows the Court of First Instance's decision in Microsoft Corp v Suinno Mobile where the Court stated that a UPC Representative could not be independent if they are "employed or financially dependent on their client or who ha[ve], within the represented body, extensive administrative and financial powers" (paragraph 36, Order 41174/2024).
The provision under scrutiny in this decision is Article 48(5) Unified Patent Court Agreement (UPCA) which provides that:
"5. Representatives of the parties shall enjoy the rights and immunities necessary for the independent exercise of their duties, including the privilege from disclosure in proceedings before the Court in respect of communications between a representative and the party or any other person, under the conditions laid down in the Rules of Procedure, unless such privilege is expressly waived by the party concerned."
The Court of First Instance (CFI) held that that provision should be interpreted in line with CJEU case law relating to Article 19(5) of the Statute of the CJEU, based on its "substantially identical" wording. The IP Federation letter argues that such reasoning is flawed not least because of the fundamentally differing functions of the two courts, the fact that the UPC is not a court of the European Union (famously so), there being no suggestion of an intention to exclude in-house lawyers' rights of representation in the UPC in the travaux (Merpel notes that if there had been, it most likely would have come to the attention of the IP Federation and the IPKat back in the day) and a number of Rules of Procedure and UPCA provisions that are contrary to the CFI's interpretation.
The letter explains that:
"Such an extreme interpretation is not required to safeguard the sanctity of the proceedings before the UPC. As noted above, Rule 290(2) of the RoP requires compliance with the Code of Conduct which in turn requires at Paragraph 2.4.1 that a “representative shall act towards the Court as an independent counsellor by serving the interests of his or her Clients in an unbiased manner without regard to his or her personal feelings or interests.” .... The IP Federation would strongly disagree with any suggestion that in-house representatives would override this obligation and their other professional obligations to benefit their employer."
The IP Federation - whose members include Pfizer, Airbus, Regeneron, Dyson, Merck, Nokia and Unilever - explained that if the CFI's reasoning was adopted by the Court of Appeal:
"it would directly affect their ability to undertake their day-to-day work by barring them from acting in this role. This would particularly be the case for in-house attorneys at small and medium sized enterprises where, depending on the value of the dispute and the financial resources of a given party, it may not be financially viable for parties to instruct outside counsel in every instance. Consequently, preventing in-house representation would effectively limit access to the Court."
Adrian Howes, the President of the IP Federation stated that:
“The Court of First Instance’s decision risks legitimate access to the UPC by in-house counsel and attorneys, and would be particularly harmful for SMEs, who may struggle to afford the costs of outside counsel. There appears little or no legal basis for the first instance court’s decision in this matter, and we strongly encourage the Court of Appeal to consider the wider implications of it on industry when considering its decision. While in certain circumstances it may be appropriate to deny an in-house lawyer or attorney the right to represent its employer in court, we see no clear justification or basis in its rules for the UPC to have a blanket ban on such representation."
The Court of Appeal hearing is being held on 29 January.

Thie plea of the IP Federation is fully justified.
ReplyDeleteQualified representatives before the EPO having received a further qualification, for instance via the Hagen University or the CEIPI, should be able to represent their companies before the UPC, whether they are acting in private practice or as in-house representatives. .
They can represent their employer before the boards of appeal of the EPO and there is no reason that they could not represent their employers before the UPC. It has never crossed the mind of members of the board of appeal of the EPO to consider that in-house representative should not be accepted as not independent enough.
The position taken by the CFI is not reasonable, to say the least.
The decision is a rearguard action aimed solely at reserving legal representation to lawyers or representatives in private practice. It would also impose extra costs for representation, if in-house qualified representatives were not allowed to represent their employer before the UPC in spite of being duly qualified.
For the same token, not all technically qualified judges are working in private practice. Are, ab initio, technically qualified judges working in-house less independent that those working in private practice? Serious doubts are permitted.
Was the letter accepted by the Court?
ReplyDelete