Judgment day: could UPC judges harmonise international patent law?

The Administrative Committee will soon announce which judges have been appointed to the Unified Patent Court (UPC), sparking fresh debate over what this means for harmonisation across Europe.

Parallel litigation

Corporations litigating in the European Union have experienced different outcomes by nation with regard to comparable patent and supplementary protection certificate litigation cases. Outcomes often differ even when litigation is conducted in parallel, with the same patent, the same parties and the same facts.

National courts differ, for instance, in the standards required for granting interim measures such as preliminary injunctions, in the questioning of experts, and in the tests adopted for applying the doctrine of equivalents.

Until now, there has been little alternative to the litigation of patents in multiple national courts, except for the possibility of centrally revoking a patent through opposition proceedings at the EPO. To paraphrase Lord Justice Jacob and Peter Prescott QC, and as recently quoted by Mr Justice Arnold (as they then were), you cannot have all ships steering in the same convoy unless there is something like a commodore.

Is harmonisation on the horizon…

The prospect of a commodore may be closer than ever, as the UPC begins to hear opening cases across its initial 17 contracting member states. As the UPC will be composed of judges drawn from various member states, a harmonised approach to patent litigation may emerge.

Within the UPC, judges may be allocated to one of the divisions of the Court of First Instance: local, regional, or central. Judges are also appointed as part of a pool, from which they can be allocated to any local or regional division as cases require. The pool may therefore serve as a strong harmonising mechanism, mixing judges across divisions and helping to spread uniform practices.

It appears, from the literal wording of the UPC’s provisions, that former members and examiners of the EPO Board of Appeal may transition into the UPC. If so, then the EPO’s case law could be brought into the UPC, especially given that patent validity at the court will be assessed based on European Patent Convention provisions, which have been applied at the EPO since its creation in 1977.

UPC judges are either legally or technically qualified, with each pathway having its own requirements. Unlike legally qualified judges, technically qualified judges need not be eligible as judges of their national courts, and the pool may include legal professionals such as patent attorneys and litigators. Indeed, the UPC Agreement requirements will mean that in practice, most technically qualified judges will likely have been European patent attorneys, given the specific range of skills required.

Already, the UPC framework is designed to bring together the best judges and legal professionals from across the member states, assembling different perspectives directly into the court’s panels to apply the same set of provisions to assess validity and infringement.

…Or is the UPC another setting for parallel litigation?

Despite the cause for optimism, it remains to be seen whether the UPC framework will be enough to bring about the challenge of international harmonisation. If not, then the UPC may simply mirror the divergence seen in national courts, albeit to a lesser extent due to the single set of provisions applied.

For instance, it is worth noting that individual judges may be allowed to perform certain functions on their panel’s behalf. Although there are valid reasons for allocating functions to individual judges, the risk remains that exchanges of views and reconciliation of different national practices may be restricted. For instance, before the oral hearing, an interim procedure is overseen by a single judge acting as rapporteur for the panel. The rapporteur’s functions are critical. They must identify the key points for the hearing, order the production of evidence and order answers to specific questions.

Another factor that may reduce exchanges of views across the UPC is that highly active local divisions are assigned a pool judge on a long-term basis and will contain two legally qualified judges that are both nationals of the hosting state. In this way, any harmonising effect of the pool may be reduced because of the potential lack of rotation.

What harmonisation could mean for Europe

It is, of course, impossible to predict whether any of these provisions will push the UPC towards or away from harmonisation. With one court deciding on patent validity and infringement for multiple member states, there is cause for optimism that coordination should improve.

If the UPC can achieve harmonisation across all of its panels, then this may have influence over national courts from which UPC judges are drawn. At first, the vast majority of UPC judges are expected to be part-time and potentially retain existing judicial functions at the national level. These judges may therefore take a uniform UPC approach back into each national court. The result of this feedback mechanism could be a European litigation system harmonised at the national level as well as the supranational level.

The imminent announcement of the appointed judges will give the first insights into how national practices will be assimilated into the UPC and whether it can assume the mantle of commodore.