Article 48 of the Agreement on the Unified Patent Court (UPCA) defines the obligation for parties to be represented before the Unified Patent Court (UPC).
Under article 48(1), “lawyers” authorized to practice
before a court of an EU Member State may represent parties before the UPC.
Under article 48(2), European patent attorneys may also represent parties although further requirements must fulfilled: they must “have appropriate qualifications such as European patent litigation certificate”.
The UPC administrative
Committee has decided on the rules for the European Patent Litigation Certificate
(available here: https://www.unified-patent-court.org/sites/default/files/ac_06_22022022_rev_e_0.pdf ) that
will enter into force on 15th June 2022.
essentially provide the conditions required for the European patent litigation
certificate (Part I).
They also define the
other appropriate qualifications (Part II): these are essentially “law
diplomas” defined as “a bachelor or
master degree in law according to relevant educational standards in a Member
State of the European Union” or “an
equivalent state exam in law of a Member State of the European Union.”
Rules also provide for additional “other
appropriate qualifications” during a one year transitional period
(Rule 12). These so-called “grand father provisions” are:
- Either the completion or certificates of selected
existing national patent courses or patent litigation courses, such as the courses
leading to the Diploma on Patent litigation in Europe or to the Diploma of
international studies in industrial property (specialized in patents) provided
by the Centre d’Études Internationales de la Propriété Intellectuelle, in
- Or the established practice in representing a
party without the assistance of a lawyer, or the serving as judge before a
national court of a Contracting Member State (in at least 3 patent infringement
actions within the five preceding years).
transitional measures will apply for only one year, compared to the initially
proposed period of three years.
final version of the Rules also take into account the leave of the UK following
the Brexit: the UK-based courses and certificates may be accepted, only of they
were gained before December 2020. UK based European Patent Attorney may be able
to represent whereas UK lawyers will not be qualified (unless they have another
qualification in an EU state).
Patent Attorneys seeking to take advantage of the transitional provisions to be
able to represent parties before the UPC should file a request within the UPC
registrar (through the CMS) with a supporting evidence (a copy of their
respective certificate or details to identify the infringement actions) within
one year of the entry into force of the UPCA to be registered on the list of
As a conclusion,
representation at the UPC can theoretically be done by either an Attorney at
Law or a qualified European Patent Attorney. Nevertheless, given the fast pace
scheduled for the proceedings, and the
completeness of the subject matters which may comprise complex legal and
technical issues, it will be worth constituting interprofessional teams having
Representatives of both professions to ensure the handling of the proceedings
At this time, it is
estimated that LAVOIX will have 45 European Patent Attorneys and 6 Attorneys At
Law able to represent clients before the UPC.