Representation before the UPC
The UPC Court of Appeal (CoA) issued an orderUPC_CoA_563/2024 – APL_53716/2024 on 11 February 2025 in Suinno Oy/Suinno Licensing Technologies Oy (Suinno) v. Microsoft Corporation (Microsoft) concerning representation of parties before the UPC [Art. 48(1)(2) UPCA].
According to the ruling, in-house/corporate lawyers and in-house/corporate patent attorneys can act as UPC representatives, however, with some restrictions.
First, they must fulfil the conditions set in Art. 48(1)(2) UPCA. Second, they must not have extensive administrative or financial powers within the legal person they represent. Further, as representatives for the parties they shall enjoy the rights and immunities necessary for the independent exercise of their duties [Art. 48(5) UPCA].
The degree of powers and independence are not defined in this ruling (link below).
ARTICLE 48 Representation
(1) Parties shall be represented by lawyers authorised to practise before a court of a Contracting Member State.
(2) Parties may alternatively be represented by European Patent Attorneys 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.
(5) Representatives of the parties shall enjoy the rights and immunities necessary for the independent exercise of their duties, including the privilege from disclosure in proceedings before the Court in respect of communications between a representative and the party or any other person, under the conditions laid down in the Rules of Procedure, unless such privilege is expressly waived by the party concerned.
The case behind this ruling is an infringement claim filed by Suinno as proprietor of EP 2 671 173 (patent in suit) against Microsoft with the Paris Central Division (CFI) on 9 April 2024. In connection with the infringement claim, Suinno filed an application under Rule 262A RoP.
Microsoft alleged that this application was inadmissible based on the lack of independence of Suinno’s representative. They referred to Art. 48(5) UPCA and Art. 2.4 of the Code of ConductUPC Code of Conduct for Representatives who appear before the UPC according to Rule 290.2 RoP.
2.4. Demeanour in Court
2.4.1 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.
Art. 19(5) Statute of the CJEU
Such agents, advisers and lawyers, when they appear before the Court, enjoy the rights and immunities necessary to the independent exercise of their duties, under conditions laid down in the Rules of Procedure.
The wording of these provisions is substantially identical to that of Art. 19 of the Statute of the CJEU, which based on case-law has set a “standard” according to which a party cannot be properly represented by an individual who is financially dependent on the principal or who has extensive administrative and financial power within the party being represented. Thus, the “standard” should also apply before the UPC.The wording of the epi Code of Conduct, Art. 1(c) and Art. 4(e) follows the same line.
Microsoft further noted that Suinno’s representative is, or at least was at the time of filing of the infringement action and the Rule 262A RoP application, the named inventor, the original applicant, the managing director of the first assignee of the patent in suit and the main share holder of the company.
They also, as an alternative, requested a referral to the CJEU.
The CFI found that the application pursuant to Rule 262A RoP was inadmissible owing to the lack of the independence of Suinno’s representative. Leave to appeal was granted considering the novelty of the issue and the need for consistent interpretation of the independence of a representative before the UPC.
Appeal proceedings were initiated and before the appeal hearing held on 29 January 2025, epi filed a position paper in defence of rights of representation of in-house EPA’s before the UPC. This was rejected by the CoA. CIPA and the IP Federation filed amicus curiae briefs which were also rejected.
An appeal hearing was held in Luxembourg on 29 January 2025. The CoA noted that there are two legal issues, i.e. the concept of representation and the independence of the representative. A party must be represented before the UPC [Art. 48(1)(2)(7) UPCA and Rule 8.1 RoP], the only exception given for decisions of the EPO [Art. 32(1)(i) UPCA]. Independence [and privilege] are covered by Art. 48(5) UPCA and Rule 287(2) RoP.
Rule 8 Party and party’s representative
1. A party shall be represented in accordance with Article 48 of the Agreement unless otherwise provided by these Rules [Rules 5, 88.4 and 378.5].
Rule 287 Attorney-client privilege
1. Where a client seeks advice from a lawyer or a patent attorney he has instructed in a professional capacity, whether in connection with proceedings before the Court or otherwise, then any confidential communication (whether written or oral) between them relating to the seeking or the provision of that advice is privileged from disclosure, whilst it remains confidential, in any proceedings before the Court or in arbitration or mediation proceedings before the Centre.2. This privilege applies also to communications between a client and a lawyer or patent attorney employed by the client and instructed to act in a professional capacity, whether in connection with proceedings before the Court or otherwise.
Further, the CoA noted that UPC is not an EU Court but a court common to several member states (Brussels Regulation). There is no need for a referral to the CJEU.
During the hearing it was clear that there was no general objection against in-house representation, the objection only related to the position of Suinno’s representative.
In the order of 11 February 2025, the CoA rejected the appeal finding the ruling of the CFI on inadmissibility of the Rule 262A application to be correct.
On 12 February 2025 the CoA issued three ordersUPC_CoA_634/2024 – APL 58930/2024 / UPC_CoA_635/2024 – APL_58934/2024 / UPC_CoA_636/2024 – APL_58935/2024 confirming the CoA’s position on representation.
On 3 March 2025 the CFIUPC_CFI_163/2024 – ACT_18406/2024 granted Suinno a period of 30 days to appoint a new representative. The case now proceeds with a new representative for Suinno.
Two of the CoA headnotes.
No corporate representative of a legal person or any other natural person who has extensive administrative and financial powers within the legal person, whether as a result of holding a high-level management or administrative position or holding a significant amount of shares in the legal person, may serve as a representative of that legal person, regardless of whether said corporate representative of the legal person or natural person is qualified to act as a UPC representative in accordance with Art. 48(1) or (2) UPCA.
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.
