The appeals court of the Unified Patent Court (UPC) has stepped away from a blanket ban on in-house counsel appearing before the court, although employed lawyers and patent attorneys could be barred if they have extensive “financial powers” within their company.

The decision, which was handed down by Court of Appeal judges Klaus Grabinski, Peter Blok and Emmanuel Gougé on 11 February, relates to a September ruling involving a patent infringement dispute between Microsoft and Finnish company Suinno Mobile & AI Technologies Licensing Oy.  

The September ruling challenged the ability of one of the parties, Suinno’s in-house representative and the inventor of the patent in suit, to be an “independent counsellor” as set out in the UPC’s code of conduct.

In the latest decision, the judges said that no corporate representative of a company who has “extensive administrative and financial powers”, whether as a result of “holding a high-level management or administrative position or holding a significant amount of shares” may serve as a representative regardless of whether said “corporate representative of the legal person or natural person is qualified to act as a UPC representative”.

The court added that although Suinno’s representative was a qualified patent attorney “his extensive administrative and financial powers within Suinno, preclude him from representing Suinno in filing an application under R. 262A RoP requesting certain documents to be kept confidential from Microsoft”.

But the court made it clear that, unless they are in such a position, representatives (including patent attorneys) may be employed by the company for which they are acting before the UPC.

The decision in September had prompted two UK IP organisation heads – IP Federation president Adrian Howes and Chartered Institute of Patent Attorneys (CIPA) president Bobby Mukherjee – to write to Grabinski expressing their concerns about the ruling.  

Welcoming last week’s ruling, Mukherjee said: “We are pleased to see that the Court of Appeal of the UPC has taken a sensible approach to the in-house representation issue.

“The court has acknowledged that whilst there are some situations where a representative is conflicted from acting independently, this is clearly not the case for most employed representatives. CIPA is glad that the court’s decision has reflected the position as set out in our recent open letter.”

The appeals court judges ruled: “The independent exercise of the duties of a representative is not undermined by the mere fact that the lawyer or the European patent attorney, qualified as a representative under Art. 48(1) or (2) UPCA is employed by the party he or she represents.”

Articles 48(1) and (2) govern who can represent parties in proceedings before the court.

The appeals court went on to say that the UPC is not an EU court and it therefore follows that the UPC – like the national courts of its contracting member states – is not bound by the Court of Justice of the European Union’s (CJEU) interpretation of the term “independent exercise of duties”. CJEU statute states that lawyers employed by a legal entity are not entitled to represent that entity as a party in proceedings before the CJEU and the EU courts.