26. UPC Pills – The independence of the Representatives

Our today's pill focuses on the independence of the Representative in the UPC system and the judges' approach with regard to its evaluation. Last June 26, 2024 the UPC Central Division – Paris Seat issued an order in which the independence of the plaintiff’s Representative was analysed as set out below.

The relevant application was lodged in the infringement proceedings UPC_CFI_164/2024 pending between Suinno Mobile & AI Technologies Licensing Oy (Plaintiff in the main proceedings and Applicant for this order) against Microsoft Corporation (accordingly, Defendant and Respondent) and having as object the European Patent n° EP 2671173.

The application that was decided with the order at hand concerned Rule 262A of the Rules of Procedure (RoP) regarding the protection of confidential information. What does the independence of the Representatives have to do with the protection of confidential information? The answer to this question lies in the peculiar circumstances of the case.

The Applicant/ Plaintiff asked for the protection of confidential information – pursuant to Rule 262A RoP – regarding two agreements submitted as evidence in the main proceedings as they supposably comprised business secrets of its licensees.

The Respondent/Defendant on the other hand requested this application to be dismissed, objecting its inadmissibility on the grounds of a violation of Rule 290(2) RoP on the independence of the Representative: according to the Respondent, the Applicant was non-compliant with said Rule since its Representative was also “(i) the named inventor of the patent-in-suit; (ii) the original applicant of the application underlying the patent-in-suit; (iii) the Managing Director of the first assignee of the patent-in-suit, Suinno Oy; (iv) the managing Director of the subsequent assignee of the patent-in-suit and Plaintiff in the main proceedings” (paragraph 4 of the decision). Hence the application itself was illegitimate, having been made by a non-independent Representative.

The Presiding Judge/Judge Rapporteur of the panel 2, Paolo Catalozzi, in the order at issue examined preliminarily the Respondent’s objection on the violation of Rule 290(2) RoP and stated that no infringement of said Rule took place in the case at hand.

Pursuant to Rule 290(2) RoP: “Representatives who appear before the Court shall strictly comply with any code of conduct adopted for such representatives by the Administrative Committee”.

The Rule refers to Article 2.4.1. of the Code of Conduct for Representatives, adopted by the Administrative Committee on 8 February 2023, according to which “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”.

Under these rules, there may be a conflict of interest for Representative, although no precise circumstances in which the same may exist are indicated. Therefore, the judges' assessment is decisive.

In the order at issue, considering the role of the Plaintiff’s Representative and the applicable Rule, both mentioned above, the Judge held that that objection was unfounded.

According to the Judge:

1. The code of conduct imposing an obligation to act as an independent Representative aims at protecting the effectiveness of the party's right to defence in court.
2. The lack of independence must be assessed not in an absolute sense, but with reference to the possible harm to the interests of the party on whose behalf the Representative acts.
3. For this reason, the mere fact that the Representative also carries out active administrative tasks on behalf of the represented party and that he may be directly interested in the outcome of the case is not decisive in order to consider that the representative is not independent according to Rule 290(2) RoP.
4. Furthermore, this violation can only be asserted by the party having this Representative, since the Rule – and the related obligation - have been placed in order to guarantee this party, and not the opposing one.
5. Finally, while it is true that the Court may exclude a lawyer from the proceedings when he or she uses his or her rights for purposes other than those for which they were granted, there is no evidence to support such conduct in the case at hand.

The Judge therefore rejected the request for assessment of violation of Rule 290(2) RoP.

Then, the Judge examined the right to protection of confidential information stating that when objecting a request for protection of confidential information, the party (in our case the Respondent) has to demonstrate specific interest in accessing the documents. (For further information on protection of confidential information check our UPC Pill No. 21.

For the reasons above, the Judge granted the Plaintiff’s request for confidentiality of the two abovementioned agreements.

You can find the relevant order on the following link.