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European Patent Litigation Certificate – Response to Consultation

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Unified patent courtThe Legal Working Group of the Preparatory Committee has recently launched a consultation on their proposals for the European Patent Litigation Certificate. The consultation timeframe is relatively short and runs until Friday 25 July 2014. Comments are to submitted electronically to secretariat@unified-patent-court.org. The consultation document can be found here and an explanatory memorandum can be found here.

At a recent CIPA seminar The Hon Mr Justice Birss suggested that the best way to influence the Prep Committee’s position on the content and form of the EPLC would be to present a united front with other countries in Europe. To that end IPcopy would be interested to hear from readers in other countries, e.g. Ireland, Sweden, the Netherlands, regarding their reaction to the content of the EPLC proposal. Additionally if any reader wants to share their response to the consultation then IPcopy will be happy to start a consultation round-up post.

The comments below form the basis of this ipcopywriter’s response to the EPLC consultation. These are personal views.

Response to Consultation – General Comments

In part, Article 36(3) UPCA states (my emphasis added):

The Court fees shall be fixed at such a level as to ensure a right balance between the principle of fair access to justice, in particular for small and medium-sized enterprises, micro-entities, natural persons, non-profit organisations, universities and public research organisations and an adequate contribution of the parties for the costs incurred by the Court, recognising the economic benefits to the parties involved, and the objective of a self-financing Court with balanced finances. The level of the Court fees shall be reviewed periodically by the Administrative Committee. Targeted support measures for small and medium-sized enter­prises and micro entities may be considered.

It is submitted that part of providing “fair access to justice”  should be that parties are able to choose their UPC representative from as wide a pool of legal practitioners as possible. Against this background it is further submitted that the current EPLC proposals, especially in regards the content of the course and the limited nature of the transitional measures, will potentially prevent a large number of EPAs from gaining rights of representation and therefore potentially prevent parties from gaining access to justice.

Suggestions that EPAs will take on cases that they are unqualified to prosecute are, in this writer’s opinion, unwarranted and unfounded. It is my belief that EPAs will know the limits of their capabilities with respect to the UPC and will therefore advise clients on a case by case basis whether they can be of assistance.

In particular it is suggested that SMEs may have limited funds available for instructing additional legal representation (over and above their existing patent attorneys) and should at least have the ability to ask their own EPA to represent them (this would only be possible of course if the EPA in question felt they were capable of representing their client in the action in question).

Another particular area of concern is the interplay between the EPO Opposition and UPC revocation procedures. On paper there appear to be many similarities between the two procedures and yet an EPA will, under the proposals in question, be prevented from representing their client as a particular patent moves from the period of 9 months after grant to 9 months + 1 day after grant.

In order to provide access to justice for users of the UPC it is submitted that EPAs should be provided with a route to achieving representation rights without being unduly burdened with a lengthy training course of 120 hours of study, e-learning and examination.

Content of the Course (Rule 3)

The UPCA does not stipulate the content of the EPLC course. Instead this is defined in Rule 3 of the proposal. For the reasons noted below it is submitted that parts (a) through (f) of Rule 3 should be removed.

Particular attention is drawn to the training that the technically qualified candidate  judges for the UPC are to receive. According to a talk given by Oliver Varhelyi on 4 July in Paris (Unitary patent and Unified patent court conference) the training needs of technically qualified judges were listed as:

  • No need for training in patent law
  • Training in civil procedure (principles of procedural law and UPC rules of procedure)
  • Language training

It was also disclosed in the above talk that 90% of applicants for the technically qualified positions are EPAs. It was further noted that these applicants were all deemed eligible, i.e. no need for additional training! Presumably therefore the above topics are all that are required to sit as a technical judge in the UPC. The EPLC should not require additional training topics for EPAs over and above the topics that the judges are required to be familiar with.

Therefore, it is submitted that parts (a) to (f) of Rule 3 should be deleted. Arguably parts (g) and (h) could be deleted as well. Based on the topics that the technical judges are to receive it is submitted that the EPLC course should only require knowledge of the principles of procedural law and the UPC rules of procedure. It is also suggested that as a result the course length should be adjusted as noted below.

Duration of the Course and examination requirements (Rule 4)

If the course content is adjusted as noted above then it is suggested that the course duration should be shortened.

The course should comprise a number of modules for which exemption for specific elements may be approved if appropriate learning has occurred elsewhere. For example, after the transitional measures period has ended the courses listed in Rule 12 should be treated as accredited prior learning.

For UK candidates, UK Finals exams (P2 and P6) should provide exemption for certain elements of the course.

Transitional measures (Rule 12)

From the UK perspective it appears that the list of courses in Rule 12 is incomplete. For example it is suggested that the Birbeck College course from the mid 1990s should be included as being equivalent to at least one of the courses currently listed.

In the UK patent attorneys need to sit two levels of exams, a Foundation level and a Finals level. At the Finals level, UK registered patent attorneys are required to sit a number of Finals papers including a paper that tests detailed legal practice knowledge and abilities and also a paper that tests a candidate’s ability to assess infringement and validity in the context of a fictional infringement scenario. It is suggested that these papers should also provide UK patent attorneys (who have both EPA and national UK patent attorney status) with a further “appropriate qualification”.

For a UK patent candidate there are two routes that may be followed on the way to the Finals level. A candidate may follow either the modular Foundation exam route or one of the available university courses which provide exemptions from those exams. It is noted that the university courses have been designed to be equivalent to the Foundation exams and yet it is only the equivalent university courses (e.g. QMW/Bournemouth) that are included in Rule 12 and not the university courses and the Foundation papers.

It is therefore my contention that the EPLC proposal currently discriminates against particular individuals within the UK profession, i.e. those UK-EPAs who followed the Foundation exam route to qualification as a UK patent attorney rather than a course route. It is noted that in many cases the choice of route is determined by the firm and not the individual and so individuals may, under the current proposals, find themselves ineligible to take advantage of the transitional measures purely on the basis of the firm they trained at. From a UK firm’s perspective it is noted that specific firms will probably have chosen to use the Foundation route for their trainees rather than the university course route for their own business reasons. However, now, through no fault of their own, these firms will find that their employees are unable to take advantage of the transitional measures.

It is therefore suggested in light of the above that the transitional measures are amended to reflect that patent attorneys in the UK may use either the Foundation route or university course route to qualification. The two routes are regarded as equivalent within the UK profession and should be treated as such with the EPLC proposal.

As a final observation,it is believed that the university course route to qualification in the UK is relatively recent (early 1990s) and so members of the UK profession who trained prior to this period will be excluded from using the transitional measures as currently worded. This is considered another reason for including both qualification routes in the EPLC proposal.

Mark Richardson 15 July 2014

 

 


8 Comments

  1. Harald Springorum says:

    I strongly oppose to this view that takes not into account the legal framework of litigation that is far more then the procedural rules. Art. 24 UPC-A renders the framework of what should be known by a representative. If we follow Mark Richardson this will lead to a complete cancellation of the additional requiremts of Art. 48 (2) UPC-A and is therfore contra legem!

  2. ipcopymark says:

    Thanks Harald

    Art 24 UPCA states that the “Court shall base its decisions on….”. No reference to representative there but in any case I would argue that an EPA already knows the bulk of the sources of law listed there.

    Art 48(2) UPC refers to EPAs “who have appropriate qualifications such as a EPLC”. I’m merely pointing out in my article that the technical judges at the UPC only appear to need to be familiar with the Rules of Procedure and some procedural issues. The massive list of topics that currently appears in Rule 3 of the EPLC does not seem to be part of the requirements for the technical judge candidates.

    Since 90% of the technical judges appear to be EPAs I am wondering why EPAs who wish to be representatives at the UPC should need to take a more in depth course than the technical judges!

    I’m hardly suggesting a complete cancellation of the additional requirements of Art 48(2)UPCA!

  3. Harald Springorum says:

    The answer is as easy as obvious:

    The technical judge in the UPC can rely in minimum on two legally educated judges deciding the case with him. The representative can act without any other person and therefore, of course needs to know the legal framework of Art. 24 UPC-A that will be the basis of the decision of the court in that he shall appear. I think there is no circumvention around knowledge of the relevant law to decide AND to represent a case, may be except praying… Eventually a priest with an educational background in theology instead of law will be an alternative … But, be aware: The church – Anglicans as well as Catholics – trusts in lawyers less than in God when a case goes to court…l

  4. Harald Springorum says:

    Dear Mark!

    The answer is as easy as obvious:

    The technical judge in the UPC system can rely in minimum on two legally trained judges.The representative can and shall in a lot of cases act on its own and therfore needs to know the law of the court in that he appears. There is no alternative to know the law that will be the basis of the decision the court has to take. That is necessary for the court in its entirety AS WELL AS for each representative. There is no alternative to a profound knowledge of the relevant law except ….. praying. But, be aware even the church – the Anglican as well as the Catholic church – will trust in lawyers when a case goes to court….!

  5. ipcopymark says:

    Hi Harald

    Thank you for your further comment. I suspect we are beginning to circle the “let’s agree to disagree” point of the discussion but here goes….

    I’m not sure I buy into the idea that the Powers That Be are happy to put someone on the bench who is not, in their view, fully up to speed with the legal framework just because there are two or three “legal” judges sat with them.

    In any case, looking at Article 24 I’m pretty certain that EPAs have got (c) to (e) covered. Points (a) and (b) to my mind are covered by my suggestion that procedural knowledge and RoP knowledge is all that’s required.

    The EPLC proposal on the other hand lists a number of topics that don’t seem to have basis in Art 24 UPCA.

    I would suggest that there’s no need to start praying or call on the services of a priest. Art 48 UPCA allows lawyers with no IP background to represent.

    • Harald Springorum says:

      Dear Mark,

      Due to my experence in academic education of general lawyers as well as PAs for more than a decade at two Universities I cannot agree with you. Maybe you’re much to optimistic. But, for my experience it is possible to train PAs – not all, but a lot of them – to become a litigator.

      • ipcopymark says:

        I do aspire to be “a glass half full” person. It mostly doesn’t happen but I try!

        Just to clarify your last comment. Do you mean to say “it is possible to train patent attorneys to be litigators” or it is not possible

  6. Harald Springorum says:

    Yes, of course it is!

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