A group of intellectual property owners has written to the presiding judge of the Court of Appeal of the Unified Patent Court, Klaus Grabinski, to express “deep concern” over an earlier decision that said in-house lawyers cannot act on behalf of their companies in litigation.
In a letter revealed yesterday, January 16, the IP Federation said that the decision, handed down in September last year, has “little or no legal basis”.
Adrian Howes, an in-house counsel at Nokia and president of the federation, added: “We strongly encourage the CoA to consider the wider implications of it on industry when considering its decision.”
The CoA is scheduled to hear the matter on January 29.
The earlier ruling, handed down by the Paris Central Division, came in the Suinno Mobile & AI Technologies Licensing v Microsoft dispute.
The decision arose from an infringement action brought by tech company Suinno against Microsoft and an application by Suinno to keep certain evidence confidential.
One of the issues Microsoft raised was whether a person who was the managing director and main shareholder of a party, as Suinno’s legal representative was, could act as an official UPC representative.
Microsoft referenced Article 48(5) of the UPC Agreement (UPCA), which requires representatives to be independent. The article is modelled on Article 19(5) of the Statute of the Court of Justice of the EU (CJEU).
The UPC accepted that the forum’s rules prevent a party from being represented by a lawyer “employed by or financially dependent upon the party”.
The decision caused concern at the time with one in-house lawyer telling Managing IP it was “not in the interest of justice”.
‘Wrong in law’
In yesterday’s letter, the federation said the Paris division’s finding was wrong as a matter of law.
The letter pointed out that the UPC does not mimic the function of the CJEU but instead harmonises the functions of national courts.
It went on to note that there is nothing in the UPCA to suggest that the signatory member states had intended to incorporate the existing case law on Article 19(5) of the CJEU statute into the functionality of the UPC.
Howes, also head of IP and standards at Nokia, said: “The first-instance 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.”
He added: “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 IP Federation’s members include 10 of the top fifty EPO applicants and were responsible for 10,244 European patent filings in 2023.
Microsoft is a member of the federation but did not participate in the preparation of the letter.
