The list of UPC judges has finally been published.
There wasn’t much time left as the first training phase for technically qualified judges started taking place in France early October 2022.
Although it’s exciting to see so many high-profile names from the European patent law world on the list, it can be slightly daunting given that many are renowned pro-patentee advocates whereas others are famous for being on the infringer’s side. Bulgarian Supreme Court Judge Lyubka Petrova, also a member of the UPC Advisory Committee that selected the UPC judges, explained the selection process that led from thousands of CV reviews to the appointment of 34 legally qualified and 51 technically qualified UPC judges (LSS Summit 11 October 2022).
She underlined the importance of having a pool of judges with a good spread of technical areas, nationalities, and languages as this would help achieve a uniform application of the rules. Her Honour Judge Melissa Clarke was saying recently that it would be a pity, and probably “considered as a failure of the new system”, if the first instance divisions were each to develop their own interpretation of the rules such that the same case could be decided differently depending on where it was heard (ChIPs European Conference 29 September 2022).
As the UPC sets out to be the most efficient forum for patent litigation in the EU, and efficiency means speed and quality, the court of appeal judges will have to quickly give guidance on the right interpretation of the new rules to allow for judicial certainty. Until then, Presiding Judge Nathalie Sabotier, who is also assisting in training the UPC technical judges (see JUVE, 11 October 2022), conceded that each judge would share “their own cultural background” during the decision-making process.
This does not mean that only EU case law will be helpful in shaping the first UPC cases, in fact any case law could comprise relevant teachings. Her Honour Judge Melissa Clarke even listed Singapore and US jurisprudence in this “enormous moot” that would happen in the UPC’s first stages. Supreme Court Judge Petrova’s personal opinion was that for validity purposes, it would make sense to follow the EPO case law given that the EPC will be applied by the UPC.
When asked whether the UPC should grant (ex parte) preliminary injunctions, both Judge Nathalie Sabotier and Judge Marina Tavassi agreed that this would be necessary for the UPC to be an efficient forum. For an ex parte PI request to be acceptable, Judge Nathalie Sabotier considered that the patent should not be “obviously invalid”, hence a prima facie analysis could be sufficient. Judge Marina Tavassi remembered being part of the committee drafting the rules relating to provisional measures, heavily debating the way they should be crafted, and eventually considering that the most crucial aspect was the duty for “the court to weigh out the interests of the parties and in particular to take into account the irreparable harm” that would be caused by granting (or not) the injunction.
Proportionality of the measure resulting from a clear infringement situation seemed more important than assessing the validity of the patent that is the basis for the PI request. Such a validity analysis would also go against the need for a speedy and pragmatic approach required for PIs. This is particularly interesting in the context of the recent CJEU decision C-44/21 relating to the German courts’ practice where the patent’s validity threshold was considered too high (where only patents which have survived a first instance opposition/revocation action can be the basis for a PI request).
However, Presiding Judge Kuehnen commented that this validity requirement was part of a balanced approach taking into account the interests of the parties (GRUR 2021, 466). Therefore, that threshold could be incorporated into UPC case law by German judges as part of the proportionality requirement. No validity requirement appears explicitly in the UPC rules relating to PIs and it is clear that this omission was intentional. As timelines for provisional measures actions are much shorter than proceedings on the merits, it is likely that the court of appeal will have to play its role of harmonising jurisprudence as early as mid-2023.