On February 11, the Court of Appeal issued their decision on the appeal raised in the ongoing infringement action brought by Suinno Mobile against Microsoft. The infringement action concerned European patent no. 2671173, the named inventor of which being both Suinno's managing director and their UPC representative in the dispute.
Early in the proceedings, Microsoft objected that Suinno's request for confidentiality of certain documents was inadmissible due to a lack of independence of the representative. Whilst the Judge-Rapporteur dismissed this, a panel review agreed with Microsoft's position, leading Suinno to file the present appeal.
In their decision, the Court of Appeal considered the broader question of whether an employee could represent their employer in a manner that did not contravene the requirements around independence. The Court held that, as a natural person could not represent themselves, it followed that a legal person could not be represented by anyone holding extensive administrative and financial powers within the legal person, whether that is as a result of owning significant amounts of shares or a high-level position in the legal person. As a result, the managing director of Suinno was deemed not able to act as their representative.
The Court did note, however, that this is not a blanket ban on representation by employees. The Court found that “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”. As a result, a representative employed by a party to the dispute is still obliged to act towards the Court as an independent counsellor, and recuse themselves should they be unable to meet their obligations under the UPC Agreement, the Rules of Procedure, or the Code of Conduct.
The Court of Appeal reinforced their decision on 12 February in an order issued on an appeal of an order granting public access to the UPC pleadings to SWAT Medical and a related individual, termed Respondent 1. Respondent 1 is an authorised UPC representative working in private practice, and the Chair of the Board of Directors at SWAT Medical. As a result of his position on the Board, the Court found that he could not represent SWAT Medical. The Court further added that being an authorised UPC representative does not relieve an individual from the requirement to be represented if they themselves are party to proceedings. Both SWAT Medical and Respondent 1 were instructed to appoint authorised representatives within fourteen days.
Whilst this may be comforting news to many, it does appear that the waters may be somewhat muddied by this decision. Whilst Suinno v Microsoft is somewhat clear cut, given the inherent interest a managing director and shareholder of a company will inevitably have in the outcome of UPC litigation, in reality there are likely many employees who fall somewhere in between the such interests and the hypothetical scenario of a qualified employee with no obligations to their employer that would likely compromise their duties to the Court. In absence of a clear demarcation between those who can and those who cannot represent their employee, it appears that, for the meantime, the decision as to whether an employee is an independent representative will have to be decided by the Court on a case-by-case basis.
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