Context: In certain jurisdictions, particularly Germany, patent infringement cases are tpyically litigated by interdisciplinary teams of attorneys-at-law supported by patent attorneys, who have full engineering degrees (often Ph.D.’s) plus specialized legal training. While the involvement of patent attorneys is optional, only one law firm appears before German courts and patent offices without involving patent attorneys: Quinn Emanuel (April 24, 2024 ip fray article). But the Unified Patent Court (UPC) allows patent attorneys without a general bar admission to become qualified UPC representatives in their own right. In September 2023, two patent attorneys from the Austrian firm of Torggler Hofmann (firm website) fended off a preliminary injunction request before the Vienna Local Division in a case relating to coffee machines.
What’s new: The same two patent attorneys, Dr. Markus Gangl and Florian Robl, PhD, are now also representing clients (including plaintiffs) in UPC main proceedings. And a case in which they are seeking a preliminary injunction will be heard by the Munich Local Division next Monday (May 6, 2024).
Direct impact & wider ramifications: Not all patent attorneys, but undoubtedly more than these two, possess the skills, expertise and personality to litigate infringement cases on their own. At present, ip fray is not aware of any other patent attorneys than these two who would act as lead counsel for clients in UPC infringement actions. It can work, given that the body of case law in the UPC is just developing now. Patent attorneys doing this must, however, research EU case law (which is binding on the UPC) and identify infringement cases before national courts that can serve as persuasive authority in the UPC.
In German national courts, patent attorneys are not authorized to act as lead counsel as those lawsuits can involve legal questions that go beyond patent law, such as contract or antitrust law. Therefore, they typically just help out with a view to the invalidity assessment, based on which the infringement proceedings may be stayed, and sometimes also with a view to technical questions in the infringement context (claim construction and mapping).
Dr. Gangl and Mr. Robl definitely succeeded in the above-mentioned case relating to coffee machines: the moving party, who lead counsel was a well-respected Austrian attorney-at-law with significant patent litigation experience, elected to give up. Neither was the PI denial appealed nor did they file a complaint to start full-blown main proceedings.
In an English-language proceeding before the Milan Local Division (UPC webpage), Dr. Gangl serves as lead counsel for Progress Maschinen & Automation AG against defendants SCHNELL S.p.a. and AWM s.r.l. He has recently brought an appeal in that dispute (appeal no. APL_20002/2024), so he may become the first patent attorney to appear as lead counsel in ain infringement action before the UPC Court of Appeal.
He was also seeking a preliminary injunction in another case from the Munich Local Division, an initiative that resulted in a settlement before anything happened.
Next Monday (May 6, 2024), the Munich Local Division under Presiding Judge Dr. Matthias Zigann will hear Tiroler Rohre GmbH v. SSAB Swedish Steel GmbH et al. (ACT_11890/2024 UPC_CFI_98/2024). The plaintiff’s lead counsel in that case is Mr. Robl, and Dr. Gangl will join him in that preliminary injunction hearing. They are based in Innsbruck, just about two hours (by car or train) south of Munich.
With the sole exception of Quinn Emanuel’s clients, deep-pocketed litigants are probably going to continue to rely on interdiscplinary teams in UPC proceedings. But for many others, the cost savings resulting from the representation by patent attorneys without the involvement of attorneys at law may be an attractive option, and in ip fray‘s opinion, the technical expertise of patent attorneys is indispensable while legal questions in the narrow context of patent infringement actions can indeed by litigated successfully by some patent attorneys.