UPC Appeals Chamber revises stance on in-house counsel representation
Court determines in-house legal representatives may appear unless they wield ‘substantial corporate authority’
The Unified Patent Court‘s (UPC) Appeals Chamber has walked back from an outright prohibition on in-house counsel pleading before the tribunal, although corporate solicitors and patent attorneys maintaining considerable “financial authority” within their organisations may still face exclusion.
The ruling, delivered by Appeal Judges Klaus Grabinski, Peter Blok and Emmanuel Gougé on 11 February, pertains to a September adjudication concerning patent infringement proceedings between Microsoft and the Finnish enterprise Suinno Mobile & AI Technologies Licensing Oy.
September’s decision questioned whether Suinno’s internal representative—also the patent’s inventor—could function as an “independent counsellor” per the UPC’s professional standards framework.
In their latest pronouncement, the justices clarified that no corporate representative possessing “substantial administrative and financial authority”—whether through “occupying senior management or administrative roles or holding significant shareholdings”—may serve as counsel, regardless of UPC representative qualifications.
The bench further noted that whilst Suinno’s representative held proper patent attorney credentials, “his substantial administrative and financial authority within Suinno disqualifies him from representing Suinno in submitting an application under Rule 262A RoP requesting certain documents be withheld from Microsoft’s view”.
Nevertheless, the court explicitly stated that absent such conflicting positions, representatives (including patent attorneys) may indeed be employed by the entity for which they appear before the UPC.
The September judgement had prompted correspondence to Grabinski from two prominent UK intellectual property organisation heads—IP Federation president Adrian Howes and Chartered Institute of Patent Attorneys (CIPA) president Bobby Mukherjee—expressing reservations about the decision.
Responding to the revised position, Mukherjee remarked: “We are heartened to observe the UPC Appeals Chamber has adopted a pragmatic approach to the matter of in-house representation. The court has recognised that whilst certain circumstances may compromise a representative’s independence, this plainly does not apply to most employed representatives. CIPA appreciates that the court’s determination reflects the position articulated in our recent open correspondence.”
The appeal judges determined: “The independent discharge of representative duties is not compromised merely because the solicitor or European patent attorney, qualified under Article 48(1) or (2) UPCA, is employed by the party they represent.”
Articles 48(1) and (2) establish eligibility requirements for court representation.
The Appeals Chamber further emphasised that the UPC does not constitute an EU tribunal and consequently—like national courts of contracting member states—remains unbounded by the Court of Justice of the European Union‘s (CJEU) interpretation of “independent discharge of duties”. CJEU regulations stipulate that solicitors employed by a legal entity cannot represent that entity as a party in CJEU or EU court proceedings.
