Can European Patent Attorneys represent parties before the UPC?
The role of representation of European patent attorneys before the UPC
According to article 48 of the Agreement on the Unified Patent Court (UPCA), there is an obligation for parties to be represented. Article 48(1) provides for the representation by a “lawyer” authorized to practice before a court of an EU Member State as a general principle, whereas under article 48(2), European patent attorneys authorized before the EPO under A.134 EPC may represent parties before the Unified Patent Court (UPC), provided “they have appropriate qualifications such as European patent litigation certificate”.
This language suggests that such Certificate is only one appropriate way among others to acquire the right of representation before the UPC for European patent attorneys.
The Administrative Committee issued Draft Rules (here) on the Certificate and other appropriate qualifications (hereafter the Draft) in March 2014, as well as a Memorandum on this Draft (here).
The Draft was open to a public consultation over last summer. The content of the current Draft, the Memorandum and the public consultation is discussed below.
A) The European Patent Litigation Certificate
Part one of the Draft relates to the courses leading to the Certificate and the suitable institutions running such courses.
The minimum duration of the courses shall be 120 hours (rule 4) and be concluded by both written and oral examinations.
The draft EPLC decision stipulates that the Certificate will be issued by universities or other non-profit educational bodies of higher education in Contracting Members States, subject to an accreditation requirement. The Memorandum makes it clear that the institutions providing the courses leading to the Certificate shall not be commercial providers of courses and conferences. Instead, the institutions should be public bodies at an academic level of a university, “due to the public law nature of granting Certificates and in order to ensure a satisfactory and harmonized quality level”.
It is to be noted that the Training Center for Judges (in Budapest) may organize a course for European Patent Attorneys and it shall not need an accreditation to provide such course.
B) The other qualifications
As an alternative to the Certificate, European Patent Attorneys seeking to represent parties before the UPC may apply for recognition of their qualifications.
Part two of the draft EPLC decision identifies two particular circumstances on the basis of which such alternative qualifications may be recognized:
1) Law diplomas (Rule 11)
European patent attorneys holding a bachelor or master degree in law or who have passed an equivalent state exam in law of a Member State of the European Union shall be deemed to have appropriate qualifications.
It is to be noted that the suitable law diplomas are not listed as such in the Memorandum. They are merely defined as “providing the necessary knowledge of private and procedural law required to conduct patent litigation”. The “equivalence” will probably have to be considered by an appropriate body on as case by case basis when deciding upon the registration on the list of entitled representatives.
Further, it seems that the diplomas may originate from any Member State of the European Union, and are not limited to those of the UPC Contracting Member States, let alone those States having ratified the UPC.
Further, and more importantly, these alternative qualifications are to apply indefinitely and are not meant to be transitional, contrary to the interim measures set out under item 2b) below.
2) The transitional period (Rule 12)
Rule 12 of the Draft provides a period of three years from the entry into force of the UPCA, during which European Patent Attorneys may apply for the right of representation before the UPC, based on the two further sets of appropriate qualifications:
(a) Successful completion of one of existing identified IP courses
(b) Previous experience in patent litigation.
The list of appropriate existing courses under (a) is currently as follows:
(i) CEIPI: courses leading to the Diploma on Patent Litigation in Europe or to the Diploma of international studies in industrial property (specialized in patent);
(ii) FernUniversität in Hagen: course “Law for Patent Attorneys”;
(iii) Nottingham Law School: course “Intellectual Property Litigation and Advocacy”;
(iv) Queen Mary College London: courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;
(v) Brunel University London: course “Intellectual Property Law Postgraduate Certificate”;
(vi) Bournemouth University, course “Intellectual Property Postgraduate Certificate”;
This list of courses is thus not exhaustive and may be further completed. One will note the variety of the courses, some providing basic knowledge in IP, some others being quite advanced and dedicated to litigation.
The appropriate qualifications under item (b) are defined as the previous representation of a party, without the assistance of a lawyer, in at least three patent infringement actions initiated before a national court of a Contracting Member State within the five years preceding the application for registration on the list of the entitled representatives.
The experience in representing parties is to be evidenced when applying for the request for recognition of other appropriate qualifications (see Rule 14).
Evidence will include details necessary to identify the infringement actions and/or copies of the power of attorney.
This option under (b) will however not be available to some European patent attorneys, depending on the national law (for example in France, where representation of parties before a national court is only opened to lawyers).
C) The public consultation
The consultation on the Draft closed on 25 July 2014. Comments on the Draft were filed by various representation bodies of European patent attorneys, including The Council of Bars and Law Societies of Europe (CCBE), The European Patent Litigators Association (EPLIT),The IP Federation, National bodies of Patent Attorneys such as The Compagnie Nationale des Conseils en Propriété Industrielle (CNCPI) and the Chartered Institute of Patent Attorneys (CIPA).
Broadly speaking, and as expected, the views are that the scope of the Draft is either too broad or overly limited, depending on the bodies and as far as representation by European patent attorneys is concerned.
The submissions of the Public Consultation are currently reviewed by the Committee. According to the latest Preparatory Committee roadmap (http://www.unified-patent-court.org/images/documents/roadmap-201409.pdf), a revised version of the Draft is to be expected for early 2015.
D) Right of audience
In addition to any rights of representation, “patent attorneys” will also be entitled to a right of audience under A.48(4) UPCA, by assisting the representatives.
The term “patent attorneys” is here to be construed in light of the Rules of Procedure.
According to the 17th Draft (http://www.unified-patent-court.org/images/documents/UPC_Rules_of_Procedure_17th_Draft.pdf), we understand that rule 292 now provides that the “patent attorneys” entitled to the right of audience should be practicing in a Contracting Member State, as a prerequisite.
This may include European Patent Attorneys registered before the EPO (draft rule 292.1 combined with draft rule 287.7), as well as any “person who is recognised as eligible to give advice under the law of the state where he practises in relation to the protection of any invention or to the prosecution or litigation of any patent or patent application and is professionally consulted to give such advice” (draft rule 292(1) combined with draft rule 287.6(b)).
These latest draft proposals differ from those of the 15th draft in that they now recite the additional requirement that the professionals should practice in a Contracting Member State in order to be entitled to the right of audience. This provision thus seems to exclude from the right of audience the lawyers and patent attorneys of a party which do not practice in the 25 Member States parties to the UPCA.
Incidentally, the “lawyers” authorized to represent parties before the UPC in article 48(1) are those authorized to practice before a court of an EU Member State and seem to be further limited to national of EU Member States under Rule 286 and Directive 98/5/EC (http://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX:31998L0005).
It thus seems that non-EU nationals having a title of lawyer in the sense Directive 98/5, such as French avocat or German Rechstanwalt and practicing in an EU Member State may not be able to represent parties before the UPC, although they may have a right of audience.
Patent attorneys entitled to the right of audience will be allowed to speak at hearings of the Court at the discretion of the Court and subject to the representative’s responsibility to coordinate the presentation of a party’s case. They will benefit from the attorney-client privilege provided by draft rule 287.
These provisions will have to be confirmed once the 17th draft meets agreement, which according to the roadmap of September 2014 (http://www.unified-patent-court.org/images/documents/roadmap-201409.pdf) should be expected for May 2015
We shall post the developments as they occur.