REGISTER now: Sweden Event - A new era for innovation: AI, the UPC and global patent opportunities
​

UPC rules that in house lawyers cannot act as UPC representatives

​
Darren Smyth
​
October 16, 2024
Additional information
Chevron icon
Info
Tags
UPC
Recent cases
Representation
Table of contents
Chevron icon
Table of contents
  • Toc Heading
  • Toc Heading

Suinno Mobile & AI Technologies Licensing Oy v Microsoft Corporation (UPC_CFI_164/2024)

Order of 16 September 2024 (ORD_41174/2024)[1]

This decision of the Paris Central Division of the UPC arose in the context of an infringement action brought by Suinno against Microsoft, and in particular an application by Suinno to keep certain evidence confidential. The court had ordered access to certain materials to be restricted to a confidentiality club consisting of Microsoft attorneys and directors, and Microsoft challenged this order. One of the issues Microsoft raised was whether, as was the case here for Suinno, where a person was the managing director and main shareholder of a party, could that person act as the UPC representative of that party, in view of the requirement of independence of representatives as set out in Article 48(5) UPC Agreement.

The UPC accepted the need for confidentiality of the materials. More significantly, the court accepted that Article 48(5) UPC Agreement, which is modelled on Article 19 (5) of the Statute of the Court of Justice of the European Union, precludes a party being represented by a lawyer that is employed by or financially dependent upon the party. While acknowledging that such lawyers can validly represent their employer in court where allowed under national legal systems, the UPC ruled that, analogous to the situation at the CJEU, parties must use the services of a third person who is authorised and cannot act themselves.

Accordingly, the court held that the original application for confidentiality filed by Suinno was invalidly filed and therefore set aside the resulting order and declared the application inadmissible. However, it ordered that the restrictions on access to the materials be maintained.

Permission to appeal was granted, and it will be interesting to see whether the Court of Appeal takes the same view. If so, this has significant consequences for access to justice at the UPC by smaller parties who may struggle to fund external litigation lawyers.


[1] https://www.unified-patent-court.org/en/node/1104

Recent Case Reports

See all Case Reports

Court of Appeal focuses on the technical effect to determine added matter
30 September 2026
The Court of Appeal provided guidance on their approach to assessing added subject matter, highlighting that the technical effect underlying the invention and how the claimed and unclaimed features contribute thereto is central to the analysis.
​
Court of Appeal affirms interpretation of product-by-process features in claims, and clarifies applicable law pre-June 2023
29 September 2026
The Court of Appeal confirmed that product-by-process features in a product claim limit the claim only where the specified process imparts characteristics that can be achieved solely by that process. It also clarified the law applicable to acts occurring before 1 June 2023, holding that UPC law may apply to ongoing infringement for injunctive relief, whereas damages for acts completed before that date are governed by national law, and that claims for provisional protection remain governed by national law.
​
Appeal reveals tricky deadlines for orders contained in decisions
29 September 2026
The Court of Appeal held that where a “privileged order” under Rule 220(1)(c), such as an order relating to the production of evidence under Article 59 UPCA and Rule 190 RoP, is contained within a decision on the merits, a 15 day appeal deadline for that order applies, separate from the substantive appeal deadline. Appeals challenging such orders after that deadline are inadmissible, and parties cannot circumvent the appeal rules by re-filing substantially the same request in the appeal proceedings.
​