UPC latest: more part-time judges, Milan proposal agreed
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UPC latest: more part-time judges, Milan proposal agreed

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Controversy over part-time judges is unlikely to subside, while a clearer picture of the Milan central division’s competencies has emerged

The Unified Patent Court will appoint more part-time judges despite the controversy over conflicts of interest, officials confirmed on Friday, June 9.

In the same announcement, the UPC also revealed plans for how the three central division seats in Paris, Munich, and Milan will split their cases.

Both decisions stemmed from a meeting of the court’s administrative committee held on June 2.

Part-time growth

Member states agreed unanimously to offer part-time positions to around 20 additional technically qualified judges, the statement said.

In addition, “around two dozen” legally qualified judges have been selected to further build the court’s “reserve list”.

The UPC’s advisory committee will consider further appointments of both legally and technically qualified judges later this year, the announcement said.

News of the additional part-time judges comes just over a month after the court introduced a judicial code of conduct that sought to address potential conflicts of interest.

Under the code of conduct, which was adopted on April 24, part-time judges are barred from appearing as legal representatives before the court or advising on UPC cases.

The code said judges should be aware that activities sponsored by or targeting specific industries may create the impression of dependence.

But it didn’t explicitly address the role of part-time judges employed as in-house counsel.

At the time of their appointment last year, eight part-time UPC judges were also employed as in-house counsel at companies including Bose, 3M, Nokia, Orange, CSL Behring, and Airbus.

Division split

At the June 2 meeting, Italy, France, and Germany also made a proposal regarding what cases the Milan central division will hear.

The three governments of those nations proposed to amend Article 7 (2) of the UPC Agreement and Annex II of the agreement, both of which still reference London.

Under the proposal, the Milan central division section would hear cases on patents that fall under Section A of WIPO’s international patent classification (IPC).

The Munich seat would hear cases on IPC Section C while the Paris seat would adjudicate disputes centring on both Sections A and C.

The agreement means Paris would hear cases covering pharmaceutical patents attached to a supplementary protection certificate (SPC), while Milan would hear all non-SPC cases.

Laura Orlando, joint global IP head at Herbert Smith Freehills in Milan, told Managing IP that she disagreed with the notion shared by some observers that Paris would get the “most prestigious” pharmaceutical cases.

Some of the most important pharmaceutical patents did not have SPCs, she noted.

“Pharma companies shape their strategy and reasoning by product, not by patent.

“On the same pharma product, you can have multiple patents, and the decision on which one to pick as a basic patent for the SPC is a strategic one that takes into account a number of factors.

“In my experience, the largest and most profitable European pharma cases in the last few years have covered patents without an SPC.”

She added: “In terms of volume and richness of the related contentious work, clearly the lion's share goes to pharma patents without an SPC.”

Member states will meet again on June 26 to make a final decision regarding the competencies of the three central divisions.

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