Journal

In-house counsel representation rights at the UPC

UPC rules that in-house patent attorneys cannot act as UPC representatives

On 24 January 2025, CIPA’s president Bobby Mukherjee sent an open letter to the Court of Appeal of the Unified Patent Court (UPC) in Luxembourg, expressing CIPA’s concerns with the decision in Microsoft Corp v Suinno Mobile. If upheld, the ruling would prevent in-house patent attorneys from representing their employers before the UPC.

[Also see the letter from the IP Federation and the UPC Court of Appeal ruling of 11 February.]

Dear Honourable Judges Grabinski, Gougé and Blok

Open Letter – APL_53716/2024 UPC_CoA_563/2024, Suinno Mobile & AI Technologies Licensing Oy v Microsoft Corporation – appeal hearing 29 January 2025.

I write on behalf of the Chartered Institute of Patent Attorneys (‘CIPA’) in the United Kingdom, in my capacity as CIPA’s President. CIPA wishes to set out the case for in-house counsel to retain full rights of audience and participation as UPC representatives.

CIPA is the professional and examining body for patent attorneys in the UK. CIPA represents more than 99% of the UK’s 2,900 practising patent attorneys, as well as over 1,000 trainee patent attorneys. Approximately 15% of our practising patent attorneys work in industry. I should note that I work in industry as Chief Counsel, IP &Technology Law at BAE Systems plc, although this letter is sent in my capacity as CIPA President and represents the views of members in both private practice and industry.

As part of CIPA’s remit, we advocate for our members by providing expert advice, opinion and commentary, including in relation to international subject matter. We are aware of the letter sent to you on 16 January 2025 by Adrian Howes, President of the IP Federation. We fully support the views set forth in that letter.

This letter provides our own perspective on representation before the UPC by in-house representatives, including an overview of the regulatory framework governing CIPA-registered in-house patent attorneys, highlighting the relevance of and importance to their rights of representation before the UPC system.

We note that of the approximately 10,000 registered UPC representatives, around 87% are European Patent Attorneys (‘EPAs’), who are governed by the epi Code of Conduct (Official Journal EPO 2024, A111) and the Administrative Council of the EPO Regulation. The EPA profession is, like that for UK patent attorneys, a unitary profession, which draws no distinction between attorneys in private practice or in-house.

The vast majority of CIPA’s members are also EPAs and around 70% of UK EPAs are registered as UPC Representatives in accordance with the Rules on the European Patent Litigation Certificate. Given the significant involvement of the UK-based EPAs in the unitary patent and Unified Patent Court system, CIPA has recently set up a UPC committee to better support its members and the wider IP professions’ participation.

Patent attorneys in the UK are regulated by the Intellectual Property Regulation Board (‘IPReg’), in accordance with section 275A of the Copyright, Designs and Patents Act 1988 and the Legal Services Act 2007. The IPReg Core Regulatory Framework in force since 1 July 2023 requires that all regulated persons adhere to ethical behaviours in carrying out their professional duties. This includes the requirements to:

• act in a way that upholds the constitutional principle of the rule of law and the proper administration of justice;
• act with independence; and
• act with integrity.

These requirements apply equally to all practising UK patent attorneys irrespective of whether they work in-house or in private practice or whether they practise in the UK or elsewhere. Breach of these requirements is a ground for disciplinary investigation and potential sanction by IPReg. Registered attorneys are not only under a duty to comply with IPReg’s Code of Conduct themselves, but also to report breaches of the Code (whether committed by themselves or another regulated attorney) to IPReg for further investigation.

CIPA has been following the Judgments and Orders that are publicly available in the above-referenced UPC action. We are aware that the oral hearing of the appeal of the Order of the Paris Central Division of 16 September 2024 is scheduled to be heard on 29 January 2025, where the panel will be considering the important issue of the interpretation of article 2.4.1 of the UPC’s Representative’s Code of Conduct.

CIPA has no legal interest in the above-reference action, but we wish to raise the potential wider implications of the Court’s Judgment for those patent attorney UPC Representatives who are employed in industry rather than a private practice law firm.

As we understand the decision of the Paris Central Division, the action has involved a challenge to the ability of the Claimant’s UPC Representative to meet the requirements of article 2.4.1 of the Code of Conduct for Representatives. This states: ‘A representative shall act towards the Court as an independent counsellor by serving the interests of his or her Clients in an unbiased manner without regard to his or her personal feelings or interests.’ We note that this wording echoes that of Rule 1(c) of the epi Code of Conduct.

As we understand from the Judgment, a number of factors relating to independence of the Claimant’s UPC Representative have been raised. We write solely in relation to the issue of the independence of UPC Representatives who are patent attorneys employed in industry.

We understand that national laws across European Patent Convention (‘EPC’) countries and the UPC contracting states vary in terms of whether in-house patent attorneys can register with their national bar and/or whether legal privilege applies to legal communications with in-house patent attorneys. We note the wording of article 48(2) UPCA: ‘Parties may alternatively be represented by EPAs who are entitled to act as professional representatives before the European Patent Office pursuant to article 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate’. No distinction is made between in-house EPAs and those in private practice, in contrast to those national laws that differentiate.

We wish to bring to your attention the fact that UPC Representatives who are European and/or CIPA registered patent attorneys attract legal professional privilege, including litigation privilege. As a common law jurisdiction, disclosure and discovery of evidence is available in UK patent proceedings. As disclosure is available, legal professional privilege (encompassing legal advice privilege and litigation privilege) applies to certain communications. This means communications and information attracting privilege can be withheld from third parties or the Court.

Subject to meeting certain qualification requirements, patent attorneys can represent clients in various patent proceedings before the UK courts. Therefore, in the UK, legal professional privilege has been extended by section 280 Copyright, Designs and Patents Act 1988 to registered patent attorneys or European patent attorneys for documents generated in connection with advice given in relation to certain types of intellectual property, including inventions, designs, technical information. CIPA registered patent attorneys also attract litigation privilege in relation to advocacy or litigation services. In terms of communications relating to legal matters and attracting privilege, there is no distinction between in-house or private practice lawyers or attorneys. Privilege for EPAs in general is provided by Rule 153 EPC, where there is also no distinction made between those in private practice or in-house.

For many companies, the ability to utilise their in-house intellectual property team, including patent attorneys registered as UPC Representatives is an important part of their strategy regarding the UPC system. As set out above, all EPAs who are CIPA registered are held to the highest standards of conduct before any Court or tribunal and attract legal professional privilege. Accordingly, CIPA would be concerned if such patent attorneys were precluded from full rights and participation as UPC representative, based purely on their employment in industry.

A key advantage of the UPC system is the access to relatively rapid and cost-effective patent litigation. If litigants who employ capable in-house UPC representatives were in future required to instruct outside counsel in their UPC cases as a matter of course, this would add unnecessary cost and complexity to the system.

Like the IP Federation, we accept that in certain circumstances it may be appropriate for the UPC to prevent a given individual from acting as a UPC Representative under the Rule 291 RoP mechanism. However, we agree that this should be on a fact dependent case-by-case basis and should require evidence that the UPC Representative has, or may inadvertently have, lost their ability to exercise their duties independently. We would be concerned at the wider implications for in-house EPAs if the UPC were to exclude them directly or indirectly from acting as UPC representatives solely on the basis of their employment status.

I hope that our comments are helpful in your consideration of the issues around in-house representation.