Judgment day: could UPC judges harmonise international patent law?
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

The Administrative Committee will soon announce which judges have been appointed to the Unified Patent Court (“UPC”). By bringing together individuals from different national legal systems to judge its first cases, the UPC may achieve the longstanding goal of harmonising EU patent law and some aspects of SPC law. Here, we review the functions of UPC judges, and ask whether harmonisation of patent law across Europe is on the horizon.


Parallel litigation

Corporations litigating in the EU have experienced that different national courts reach different outcomes in comparable patent and SPC litigation cases. Outcomes often differ even when litigation is conducted in parallel, with the same patent, the same parties, and the same facts[i]. This lack of harmonisation results from the fact that national courts each apply their own validity and infringement rules.

Rules differ, for instance, in the standards required for granting interim measures such as preliminary injunctions. In addition, expert evidence can be a small or very large part of hearings depending on the jurisdiction concerned, and questioning of experts may be judge-led or attorney‑led. Even interpretation of the scope of patent claims can vary, as jurisdictions use different tests to determine the scope of a claim under the doctrine of equivalents. These and other variations lead to unpredictability and can cause seemingly contradictory outcomes in comparable cases.

Why do we see different outcomes between national courts, even though the founding principles underpinning local infringement and validity rules are shared? Some point to the different structures of the courts. For instance, unlike many other jurisdictions, Germany hears infringement and validity proceedings separately in “bifurcated” proceedings. Proponents argue that bifurcation allows specialist judges to hear each arm of the case, but others argue that separation of the procedures deprives judges of a case’s full picture. Another factor in different outcomes may be the historic precedent that has evolved in each jurisdiction over time and is influenced by local conventions. Still a further factor may be the volume of cases heard, which differs significantly between jurisdictions.

Whatever the causes, up to now there has been little alternative to the litigation of patents in multiple national courts, as there is no single body competent to hear all parts of patent litigation cases spanning many jurisdictions at once[ii]. To paraphrase Jacob LJ and Peter Prescott QC and as recently quoted by Mr Justice Arnold[iii] (as they then were), you cannot have all ships steering in the same convoy unless there is something like a commodore.


Harmonisation via the UPC?

The prospect of a commodore may be as close as ever, as the UPC hears opening cases across its (at first) 17 Contracting Member States. International harmonisation of patent law has long been a goal of the profession, arising from multinational corporations’ need for certainty across the EU single market. 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 of Judges” from which they can be allocated to any local or regional division as cases require[iv]. The Pool may therefore serve as a strong harmonising mechanism, by mixing judges across divisions and helping to spread uniform practices.

Although members of the EPO’s Boards of Appeal and EPO patent examiners are explicitly excluded from serving as UPC (part-time) judges[v], it appears from the literal wording of UPC’s provisions that former EPO Board of Appeal members and examiners 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 UPC will be assessed based on EPC provisions that the EPO has been applying ever since its creation in 1977[vi].

UPC judges are either legally qualified or technically qualified, each with its own requirements. Legally qualified judges must meet the criteria for becoming a judge of their national courts, as well as the UPC’s own criteria for appointment[vii]. By comparison, technically qualified judges needn’t be eligible as judges of their national courts, and may include legal professionals such as patent attorneys and litigators[viii]. Indeed, the UPC Agreement requires technical judges to have “a university degree and proven expertise in a field of technology”, but also “knowledge of civil law and procedure relevant in patent litigation”[ix]. These requirements mean in practice most technically qualified judges will likely have been European patent attorneys, given this specific range of skills required.

UPC divisions are organised into panels of judges which hear cases. Importantly, there is a statutory requirement for multinational panels at both first instance[x] and on appeal[xi], and the UPC Administrative Committee is seeking a balanced composition of the Court “on as broad a geographical basis as possible” among nationals of the Member States[xii]. By way of example, panels of local and regional divisions receive at least one non-national legally qualified judge from the Pool[xiii]. This again helps to bring judges from different national systems together, aiding in exchange of views.

Already, the UPC framework is designed to bring together the best judges and legal professionals from across the Member States, building different perspectives directly into the panels of the UPC. These judges will all apply the same set of provisions to assess validity[xiv] and infringement[xv] across the many first instance divisions, leaving less opportunity for inconsistent UPC decisions in cases with similar facts (e.g. with the same patentee and a different generic company or telecom standard implementer). In addition, to the extent that there are discrepancies in the application of the UPC provisions at first, a single Court of Appeal will also help harmonize the first instance case law. The UPC Agreement expressly provides that where decisions may affect unity and consistency of UPC case law, the Court of Appeal may sit en banc[xvi], adding extra input into key decisions. As all judges are appointed for 6 years and may be reappointed[xvii], the first set of UPC judges has sufficient term to develop and apply consistent appellate jurisprudence, before the next cycle of appointments is made.


Or just 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 across the UPC.

For instance, it’s noteworthy 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, there is also the risk 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[xviii]. The Rapporteur’s functions are critical, including identifying the key points for the hearing, ordering the production of evidence, and ordering answers to specific questions[xix]. Similarly, provisions also allow panels to delegate their functions to a single judge[xx], and provide for election of a President of the Court of First Instance[xxi] for allocating judges to panels of the local and regional divisions[xxii]. Finally, on any given panel, the presiding judge (who must be both a legally qualified judge and the most senior judge by default[xxiii]) takes the deciding vote in the event of equal votes[xxiv].

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 and multinational panels may be reduced[xxv] because of the lack of rotation of the judges.

A provision of particular intrigue is the “dissenting opinion”, which judges may express separately from the decision of the Court[xxvi]. Although only for “exceptional circumstances”, it’s conceivable that the dissenting opinion may become commonplace, especially in the UPC’s first few years where highly regarded patent judges will wish to make their interpretation of the provisions heard by the Court of Appeal. Dissenting opinions could serve as a mechanism against harmonisation, by preventing the adoption of consistent approaches between panels. Alternatively, dissenting opinions could provide a harmonising influence by allowing judges to highlight inconsistencies between decisions and assist the Court of Appeal and the CJEU in clarifying the UPC provisions.


Much to be gained

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 harmonisation should improve. A crucial factor may be the types of case that are heard in each division from the outset, and whether or not first-instance decisions are consistently appealed.

But the importance of legal certainty cannot be overstated. If the UPC fragments into disparate divisions applying different practices, we may see a kind of “forum shopping” in which litigants seek to bring cases in specific divisions in order to obtain a panel most favourable for their case. That not all EU jurisdictions are Member States of the UPC means that any harmonisation achieved may not span the whole of Europe.

If the UPC is able to achieve harmonisation across all of its panels, however, then this harmonisation 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[xxvii]. These many part-time 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 (UPC) level.

Many hopes rest on the success of the UPC. The imminent announcement of the appointed judges will give the first insights into how national practices will be assimilated into the UPC – and whether the UPC can assume the mantle of commodore.

[i] Cremers, Eur J Law Econ (2017) 44:1–44;

Khuchua, Different ‘Rules of the Game’, 10 (2019) JIPITEC 257 para 1

[ii] Except for the possibility of centrally revoking a patent through opposition proceedings at the EPO, initiated within 9 months of patent grant

[iii] Richard Arnold, Harmonization of European Patent Law, Journal of Intellectual Property Law & Practice, Volume 14, Issue 9, September 2019, Pages 657–658

[iv] A8(2)-(5) UPC Agreement

[v] A16(7) Regulations Governing Conditions of Service

[vi] A65(2) UPC Agreement, mirroring A138(1)-(2) EPC; A139(2) EPC

[vii] A16(3) Regulations Governing Conditions of Service

[viii] A16(5) Regulations Governing Conditions of Service

[ix] A15(3) UPC Agreement

[x] A8(1) UPC Agreement

[xi] A9(1) UPC Agreement

[xii] A20(4) Regulations Governing Conditions of Service

[xiii] A8(2)-(3) UPC Agreement

[xiv] A65(2) UPC Agreement

[xv] A25-A30 UPC Agreement

[xvi] A21(2) UPC Statute

[xvii] A4(1) UPC Agreement

[xviii] A52(2) UPC Agreement

[xix] R103-R104 Rules of Procedure

[xx] R345 Rules of Procedure

[xxi] A14 UPC Statute

[xxii] R345(1) Rules of Procedure

[xxiii] R341(4) Rules of Procedure

[xxiv] A78(1) UPC Agreement

[xxv] A8(3) UPC Agreement

[xxvi] A78(2) UPC Agreement

[xxvii] A17(3) UPC Agreement