This is the first of two posts (the second will go up on IPcopy tomorrow) to cover the issues discussed in the meeting and in this post we will look at the arguments being put forward in support of patent attorneys having rights of representation in the UPC. Tomorrow’s post will highlight some of the comments from the floor and closing remarks made during the meeting.
The meeting was chaired by Roger Burt of CIPA. A brief opening set of remarks was provided by Neil Feinson of the IPO before Vicki Salmon discussed the rights of representation under Article 48 of the Unified Patent Court Agreement (copy here) and Chris Mercer took a look at Rule 286 of the Rules of Procedure of the Unified Patent Court (currently on the 15th draft, a copy of which can be accessed here). A summing up was provided by The Hon Mr Justice Birss.
Article 48 of the Unified Patent Court Agreement covers representation and the relevant parts of the article are reproduced below [with emphasis added]
Article 48 – Representation
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.
4. Representatives of the parties may be assisted by patent attorneys, who shall be allowed to speak at hearings of the Court in accordance with the Rules of Procedure.
Rule 286 on the other hand says the following:
Rule 286 – Certificate that a representative is authorised to practice before the Court
1. A representative pursuant to Article 48(1) of the Agreement shall lodge at the Registry a certificate that he is a lawyer authorised to practise before a court of a Contracting Member State. Lawyers within the meaning of Article 48(1) of the Agreement are also persons possessing a law degree (jurist) who are authorised by the Swedish Patent Attorneys Board or equivalent body in a Contracting Member State. They shall lodge a certificate evidencing such authorisation. In subsequent actions the representative may refer to the certificate previously lodged.
2. A representative pursuant to Article 48(2) of the Agreement shall lodge at the Registry the European Patent Litigation Certificate as defined by the Administrative Committee or otherwise justify that he has appropriate qualifications to represent a party before the Court. In subsequent actions such representative may refer to the certificate or other evidence of appropriate qualification previously lodged.
As can be seen from the sections highlighted above there are two routes to representation before the UPC. Representation either comes by virtue of being a lawyer who can appear before a Court of a Contracting Member State or by virtue of being an EPA with some sort of additional qualification. It should be noted at this point that there is currently no such thing as a “European Patent Litigation Certificate”. This is just a placeholder within the Agreement and the Rules of Procedure!
Taking each of the speakers in turn:
Neil Feinson’s opening remarks suggested that the issue of Article 48 has fallen to the “Human resources and training” working group who are setting up an advisory panel to work out a list of all European Patent Attorneys (EPAs) who are eligible to act under Article 48 of the UPCA. Mr Justice Birss is to act as the UK’s representative in this advisory panel. Unfortunately, the first meeting of this group has not happened yet. It was suggested that the 1000+ expressions of interest to become judges within the UPC was occupying much o the chairperson’s time (Mr. Oliver Varhelyi of Hungary).
Neil Feinson also provided a couple of brief comments regarding the progress towards ratification. Apparently there are no concrete plans yet for a public hearing on the rules of procedure of the UPC and the UK’s planned consultation for amendments to the Patents Act was referred to as happening in the summer (previously we had heard April though maybe Neil was referring to when the consultation will end).
Article 48(1) UPC
Vicki initially looked at Article 48(1)UPC and asked what the term “Lawyer” means and whether a patent attorney can be considered a lawyer.
The argument put forward here was that UK patent attorneys (registered patent attorneys – RPAs) would be treated in the same way as solicitors and barristers under the Legal Services Act and as such should be regarded as lawyers within the meaning of Article 48(1) UPC.
It was also noted at this point that the two thousand or so patent attorneys on the UK register as of the end of 2012 have rights to appear in the Intellectual Property Enterprise Court (IPEC).
So, there appears to be an argument that representation at the UPC could come via Article 48(1)UPC.
As an aside it was noted during this discussion that, of the 2000 RPAs on the UK register, approximately 70 have a litigation certificate and just 6 have an advocacy certificate (which gives the right to appear in the UK Supreme Court).
There were some counter views expressed to the Article 48(1) line of argument. Firstly, there is an old piece of European legislation that suggests only solicitors or barristers in the UK can be classed as “lawyers”. Secondly, a question was also raised [during a general floor discussion] in respect of Rule 287(6) of the Rules of Procedure which relates to attorney-client privilege. This rule separately defines “lawyer” and “patent attorney” which may suggest they should be regarded as different classes of legal representative.
Article 48(2) UPC
The alternative route to representation before the UPC is via Article 48(2) UPC for EPAs with a suitable additional qualification.
The question under Article 48(2) UPC therefore revolves around what form an “appropriate qualification” might take. It was suggested that it might be possible to argue that EPAs who were also additionally UK patent attorneys (RPAs) satisfied the conditions of Article 48(2) UPC. Obviously this would be quite a handy argument to win as it would mean that the bulk of the UK profession would be able to appear at the UPC.
Chris Mercer looked at the references within Rule 286 to the European Patent Litigation Certificate. As noted above there is currently no such certificate although there are proposals from EPI and CEIPI for courses.
In order to work out what a suitable course might need to cover, Chris looked at the issue from the point of view of what sources of law the Unified Patent Court Agreement referred to. These can be found in Article 24 UPC which refers to: the enhanced cooperation regulations (under which the unitary patent package is being created); the Unified Patent Court Agreement itself; the EPC; international agreements applicable to patents (e.g. the PCT and Paris Convention); and national law (e.g. UK Patents Act).
Chris noted that the UK profession should already be familiar with the above sources of law. Additionally we have experience of one day long oral proceedings via Oppositions at the EPO and hearings at the UKIPO. In light of this Chris queried whether the 150 hour long course being proposed by CEIPI was really necessary since there appeared to be a number of elements that were not relevant to the UPC.
To this IPcopywriter it was a little disconcerting to hear that so far there have been no solid proposals from Europe to address either the representation issue or the form that a European Patent Litigation Certificate might take. With the projected start date for the unitary patent system as early as late 2015 or early 2016 this is an issue that clearly needs to be resolved sooner rather than later, especially as the overwhelming position within CIPA Hall was that it was an extremely important issue for the UK patent profession to have rights of representation within the Unified Patent Court.
In Part II of this report we will detail the comments made by The Hon Mr Justice Birss.
Mark Richardson 28 January 2014