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.
The Rules 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.” (Rule 11).
Interestingly, the 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 France;
- 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).
Importantly, these transitional measures will apply for only one year, compared to the initially proposed period of three years.
Incidentally, the 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).
Practically, European 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 entitled representatives.
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 is optimal.
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.