[Note: see also the post on 18 June 2014 relating to the public consultation for the EPLC proposals. Closing date is 25 July 2014. ipcopymark 18 June 2014]
Back in January this year CIPA and the IPO held a joint open meeting to discuss the issue of representation before the Unified Patent Court. This is a very important topic for patent attorneys and the CIPA/IPO meeting explored whether UK patent attorneys (who are EPAs) would have rights of representation at the UPC or whether additional qualifications would be necessary. IPcopy’s reports on this meeting are at the following links – Part I and Part II.
Last week an article went up on the Law Society Gazette asking “Who can act in European patents?” and reference was made in this article to a draft paper that has recently been produced by the legal working group of the preparatory committee. IPcopy had not seen this paper (or even heard of its existence) but the author of the Law Society article was kind enough to provide us with a copy. [Update: a copy of the draft paper has now appeared online and can be accessed here. 10/3/14]
In our view, if you are a European Patent Attorney, then this report does not make for happy reading. If the views expressed in the CIPA/IPO meeting are anything to go by then this seems especially the case if you are an EPA and UK patent attorney. IPcopy summarises the main points of the draft paper below.
Before we begin, we should highlight part of the provisions of Article 24 of the Unified Patent Court Agreement (sources of law) and Article 48 (representation).
Sources of law
1. In full compliance with Article 20, when hearing a case brought before it under this Agreement, the Court shall base its decisions on:
(a) Union law, including Regulation (EU) No 1257/2012 and Regulation (EU) No 1260/2012 ( 1 );
(b) this Agreement;
(c) the EPC;
(d) other international agreements applicable to patents and binding on all the Contracting Member States; and
(e) national law
1. Parties shall be represented by lawyers authorised to practise before a court of a Contracting Member State.
2. Parties may alternatively be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate.
3. The requirements for qualifications pursuant to paragraph 2 shall be established by the Administrative Committee. A list of European Patent Attorneys entitled to represent parties before the Court shall be kept by the Registrar.
So, what does the draft paper have to say?
Title : Rules on the European Patent Litigation Certificate and Other Appropriate Qualifications
So, on the face of it this paper addresses all the available routes to representing parties at the UPC.
Rule 3: Content of the Course
This is an interesting one. Article 24(1) UPC (see above) notes the areas of law that the Court shall base its decisions upon. It would seem reasonable that a person authorised to represent parties in the Court would be familiar with the bodies of law noted in Article 24(1).
The draft paper however seems to go far wider than the UPC Agreement and additionally makes reference to:
- A general introduction to law (inc. EP law)
- A basic knowledge of private law, common and continental, inc. contract and company law
- International private law
- The role, organisation and case law of the CJEU (inc. SPC case law)
- Patent infringement and patent nullity proceedings in Contracting Member States
That’s quite an additional list of topics for a course to cover.
Rule 4 Duration of the Course and examination requirements (Rule 5 – e-learning)
The minimum course duration is 120 hours! Assuming a 6 hour day that works out at 20 full days for the course. There will also be written and oral examinations to factor in. There is a reference in Rule 5 to e-learning which apparently may be a “supplementary part of the program”. It is not clear to IPcopy whether the 120 hours course duration may include an e-learning element or whether the basic course will comprise “classroom” sessions.
Universities may be accredited to offer the course.
Other appropriate qualifications
Here we go….
EPAs having a Bachelors/Masters/equivalent state exam in law may apply for registration
During a period of three years from entry into force of the UPC Agreement (where did this three year time limit come from?) an EPA may request to be entered on the list if:
- they’ve done an appropriate CEIPI course
- they’ve done FernUniversitat in Hagen “Law for patent attorneys” course
- they’ve done the Nottingham Law School IP Litigation & Advocacy course
- they’ve represented a party in 2 or more patent infringement actions before a national court within the 4 years preceding the application request
There appear to be no other options for an EPA to gain entry to the list. It’s either the EPLC or one of the four options above. To put this into context only 70 of the 2000 or so patent attorneys on the UK register have the IP litigation certificate (just over 3% of the profession). Does this mean that Nottingham is going to be deluged with applications from the remaining 1900 or so?
If every UK attorney who wants to get onto the list of UPC representatives has to take a 120 hour course how much might this cost? Would a course cost of £10000 be about right? That could leave firms with potentially huge course fees to budget for.
The draft paper is apparently up for discussion at an 18 March meeting of the Preparatory Committee. As always, if you know more then please let us know!
And one final thought. For 9 months after a European patent grants a European patent attorney may represent their client at Opposition proceedings before the EPO in an effort to knock out that patent across every EPC-contracting state. Just one day later that same EPA can no longer represent their client in an effort to revoke that same patent at the Unified Patent Court across all UPC states, in proceedings that will presumably be very similar to opposition proceedings at the EPO, unless they can get added to the list of representatives at the UPC.
Mark Richardson 3 March 2014