IP groups fight UPC ban on in-house counsel
Leading figures from two British intellectual property organizations have addressed concerns to a Unified Patent Court (UPC) appeal judge regarding a ruling that could block corporate lawyers and patent attorneys from client representation at the court.
Letters have been sent to Judge Klaus Grabinski by Adrian Howes and Bobby Mukherjee, who lead the IP Federation and the Chartered Institute of Patent Attorneys (CIPA) respectively. Their communications address a ruling from the Microsoft Corporation v Suinno Mobile & AI Technologies Licensing Oy case.
The September 16 ruling questioned whether the plaintiff’s UPC representative satisfied Article 2.4.1 of the UPC Agreement’s code of conduct, which mandates representatives to function as “independent counsellors” who serve client interests without personal bias or self-interest.
In his January 16 correspondence, Howes highlighted that the court aligned Article 48(5) of the UPC Agreement with European Union Court of Justice precedents.
The court determined that representatives cannot maintain independence if they are employed by or financially reliant on their client, or hold significant administrative and financial authority within the organization they represent.
Mukherjee’s January 24 letter emphasized that many businesses consider their internal IP teams, including UPC-registered patent attorneys, crucial to their UPC strategy.
He pointed out that European and UK patent attorneys operate as a unified profession without distinguishing between corporate and private practitioners. A significant portion of CIPA members hold European patent attorney status, with approximately 70% of British European patent attorneys registered with the UPC.
He stressed that CIPA-registered European patent attorneys must maintain exceptional professional standards and enjoy legal privilege in all court proceedings.
The organization expressed worry about limiting patent attorneys’ UPC representation rights solely based on their corporate employment status.
While CIPA acknowledges that specific circumstances might warrant preventing individual UPC representation, Mukherjee advocates for case-specific evaluations rather than blanket restrictions.
Howes, representing an organization that includes major corporations like Pfizer, Airbus, and Dyson, warned that the ruling would particularly impact smaller businesses struggling with external legal costs.
He explained that engaging outside counsel might be cost-prohibitive for SMEs in certain disputes, effectively restricting their court access.
Howes noted that many registered UPC representatives, particularly patent attorneys, work in-house. He cautioned that if the Appeals Court upholds the initial ruling’s interpretation, it would significantly disrupt their regular duties.
While acknowledging Microsoft’s federation membership and stake in the case outcome, Howes clarified that Microsoft wasn’t involved in drafting the letter and may hold different views.
The appeal hearing is set for Wednesday (January 29).