Two UK IP organisation heads have written to a Unified Patent Court (UPC) appeals judge expressing their concerns over a decision which, if upheld, would prevent in-house lawyers and patent attorneys from representing clients before the court.

The president of the IP Federation, Adrian Howes, and the president of the Chartered Institute of Patent Attorneys (CIPA), Bobby Mukherjee, have written separately to Judge Klaus Grabinski, regarding a first-instance decision in Microsoft Corporation v Suinno Mobile & AI Technologies Licensing Oy.

The decision on 16 September challenged the ability of the claimant’s UPC representative to meet the requirement of Article 2.4.1 of the code of conduct for representatives in the UPC Agreement. This states that a representative shall act towards the court as an “independent counsellor” by serving the interests of their clients in an “unbiased manner” without regard to their “personal feelings or interests”.

Howes noted in his letter dated 16 January that the court has held that Article 48(5) of the UPC Agreement should be interpreted in line with Court of Justice of the European Union case law.

As a result, the court stated that UPC representatives cannot be independent if they are “employed or financially dependent on their client or who has, within the represented body, extensive administrative and financial powers”.

Mukherjee said in his letter from 24 January, that for many companies, the ability to utilise their in-house IP team, including patent attorneys registered as UPC representatives, is an important part of their strategy regarding the UPC system.

He continued that European patent attorneys, like UK patent attorneys, are a unitary profession and no distinction is made between in-house or private practice attorneys. The vast majority of CIPA members are also European patent attorneys and around 70% of UK European patent attorneys are registered as UPC representatives.

He added that all European patent attorneys who are CIPA registered are held to the “highest standards of conduct” before any court or tribunal and attract legal professional privilege.

CIPA would be concerned if patent attorneys were precluded from full rights and participation as UPC representatives based purely on their in-house status.

Mukherjee says CIPA accepts it may be appropriate for the UPC to prevent a given individual from acting as a UPC representative in certain circumstances. However, he maintains this decision should be reached on a fact-dependent, case-by-case basis.

IP Federation’s Howes, whose members include Pfizer, Airbus and Dyson, said the decision would be particularly harmful to small- and medium-sized enterprises (SME), “who may struggle to afford the costs of outside counsel”.

He continued that it may not be financially viable for SMEs to instruct outside counsel in every instance, depending on the value of the dispute and the financial resources of a given party. Consequently, preventing in-house representation would effectively limit access to the court.

He added: “To our best knowledge and belief, a large proportion of registered UPC representatives are employed ‘in-house’ by the client they represent. This is particularly the case for in-house patent attorneys.

“Therefore, if the Court of First Instance’s (incorrect) legal reasoning was adopted by the Court of Appeal, it would directly affect their ability to undertake their day-to-day work by barring them from acting in this role.”

Howes said Microsoft is a member of the IP Federation and has an interest in the outcome of the case, but "has not participated in the preparation of this letter. The views expressed do not necessarily reflect its views."

The appeal to the decision is scheduled to be heard on Wednesday (29 January).