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[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).
Article 24
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 lawArticle 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.
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.
Rule 6
Universities may be accredited to offer the course.
Other appropriate qualifications
Here we go….
Rule 11
EPAs having a Bachelors/Masters/equivalent state exam in law may apply for registration
Rule 12
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
IPcopy 
Tahats right and thats godd for the profession to ensure quality in representation. The Law Society is already claiming that a 120 hours program isnot sufficient. If both sides oppose so strongly then the regulation might be ok.
If the draft paper is so strongly opposed by both sides (attorneys at law (soliciters …) on one side and patent attorneys on the other side) it might be a good draft. Patent attorneys should keep in mind that it is necessary to ensure a sufficient quality level in ltigation that is – esp. In view of the legal framework of Art. 24 (1) UPC-A – not the same as in opposition proceedings. And soliciters should take into acvount that it is not the task of the EU to protect their business against well qualified competitors. Due to the requirement of additional education I have one additional remark: We all know since abt. in minimum 10 years now that there will be a fundamental change in European Patent Litigation in the near future. Everyone had a chance to improve his or her qualification in view of this. If only 70 people took this chance the kast 10 years in the UK (in Germany the situation is quite similar) this is not the problem of these wise guys, but the problem of the remaining ones that have decidid ,to do nothing’, but sit and wait.
Harald Springorum
Representation under Art. 48(2) is not limited to EPA of the UPC contracting states, however the draft rules often refer to situations arising in the UPC contracting states only, see e.g. Rules 2, 6 and 12.2, so what about the non-UPC EPAs?
Rule 12 forgot to include EPAs acting as lay judges or assisting judges (there are many of them in Europe, especially in Italy) in patent infringement actions.
Harald, you show astonishing hindsight. “We all know” since 1975 that there would be a community patent, didn’t we. People who had “took this chance” then are now largely retired if not dead. You also completely disregard that no legislative provision so far before the draft referred to in this post has indicated that any particular pre-existing qualification would be considered to satisfy the requirements of Art 48(2). Moreover, if “Patent attorneys should keep in mind that it is necessary to ensure a sufficient quality level in litigation” then why is there no requirement for “Lawyers” to have any demonstrated experience in patent matters? Ensuring quality is manifestly NOT a concern of Art 48.
Lawyers are in principle well qualified because their legal education ensures that they are ,equipped’ with a ,legal toolbox’ (called legal methodology) that allows them to understand and interprete complexlegal frameworks like the EU patent package. Additionally they are quite familar with civil procedure law and litigation in practise. Patent attorneys who wants to become trial litigators have to aquire the same or at least similar knowlde and skills. That is is the aim of the planned educational programs. Ensuring quality in representation is not the only, but one of the main oncerns of Art. 48.
Harald Springorum
Sorry, but that’s Bull***t. I’ve seen so many lawyers in court doing Patent-cases “by accident”, normally acting in penal-law and contract-law cases. The result is horrible, due to many specialities of IP-law. Experienced patent attorneys are familiar with these specialities but lawyers in general not at all!
I dont want to answer Rudi’s “B*…” comment, because it is obviously unobjective, but the arguments are worth to be discussed. Of, course there are lawyers in the sense of Art. 48(1) UPC-A that are not familiar with patent litigation. But, in principle – from a methodological point of view – in average it is much easier for them to step into these maybe ,strange world of patent litigation’ then it is for the average patent attorney due to their different way of approaches (a legal approach on one side and often a pure scientific or engineering view on the other one) that comes from their different first time academic education. This is my experience before the background of abt. 15 years of patent lotigation and abt. 12 years of academic teaching of lawyers as well as patent attorneys. And, please Rudi, be not so quick with terms like “B*…”, because that is unhelpful and will poison the discussion. Last, but not least: Why you are not indicating your full name to support your arguments in person?
Since all FR patent attorneys have the Diploma of International Studies in Industrial Property which is required to get the FR qualification according to Rule 12(1)(a) of this draft…it’s an highway for IP frogs
!!!
Then we must welcome the 1009 French EPAs to the UPC. Possibly the high standards of their courses and examinations justify it. For such a large country it is a small number of EPAs (Germany has 3872 and the UK 2050) so they may struggle to cope with the day to day work for French industry and their share of the rest of the world as well as litigation for all in the UPC
It would seem to me (purely from a UK perspective) many of the elements required by the proposed course are already covered in the IP Certificate qualifications that most patent attorneys obtain on the way to gaining Chartered Patent Attorney (CPA) status. Certainly basic law, contract law, EU law, and competition/antitrust were core elements of the Queen Mary course that I and many others have sat. I presume that the same may be true for our colleagues in France and Germany. I wonder if certain aspects of these courses could be ‘strengthened’ to enable the patent attorneys of the future to have satisfied the majority of the 120 hours needed for UPC representative qualification just though their national qualification process. In that case there may be only a small course needed to get over the final hurdle. I think this is eminently achievable if our national representative bodies press for the curriculum to be modified accordingly.
This does not rectify the present situation for already qualified patent attorneys, although surely some credit must be due. One cannot become a CPA in the UK without having passed papers in basic law. Unfortunately it is possible that one can become a litigator of patents without having passed an examination requiring knowledge of the EPC if one follows the general legal route. Whilst I hold our esteemed solicitor colleagues in the highest regard, it would seem to me in the public interest that if patent attorneys must undergo additional training then surely so should those solicitors who do not demonstrate a track record of patent litigation at the national or EU level.
I think you’re right with your comment on the Queen Mary certificate course! There issurely a misunderstanding in the actual proposal. The German course (Hagen I) and the CEIPI diploma in International Studies in Intell. property are comparable to the Queen Mary course and NOT to the NottinghamTrent course in litigation that is comparable to the CEIPI litiation course. Whether it should be sufficient to meet the requirements of a so called ,Grandfather Clause’ by a basic legal training like Hagen I, CEIPI diploma in int. iP studies and the Queen Mary College certificate or a more enhanced training in litigation matter should be necessary is a political question that has to be answered by the Administrative (preparatory) Comittee. But you are absolutely right that if so, the UK colleagues have to be treated the same way as the continental patent attorneys. If the basic level should be sufficient it has to be sufficient everywhere and that means that in UK the Queen Marycourse and not the Nottingham Trent course is necessar for the ,Grandfather’ qualification! I will explain that next week on ,Düsseldorfer Patentrechtstage 2014′ . But, from my point of view this problem has been appeared from a misunderstanding in the prep commitee and was not drafted intentionally.
A different question and from my point of view a doubtful one is the more general problem whether such a grandfather only approach on a lower level then the future litigation qualification (academic legal qualification or litigation certificate) is appropriate or not! The English solicitors wrote already a complaint to the prep committe in view of this!
Rule 11 gives rights to EPAs who have a Bachelors/Masters/equivalent state exam in law. So an LLB should pass this. Does anyone know if a GDL or LLM would be sufficient? While significant work, a GDL is very do-able over 2 years part-time.
Dr. Gilles Reiss – swisspat.de
Having learnt that in the lastest, revised draft that the QM course has now been added to the list, part of the above discussion may be outdated.. Still, I attended myself the Ceipi EPLC I attended myself. The latter has now been offered for years, to everybody, it was a fairly democratic offer to any interested EPA this way, and I think to anybody studying and supplementing the course materials with some genuine interest, it is a good to excellent course.
I am surprised though that before QM, a purely nationally training route such Hagen I easily made it on the list. It is justified that it was not the – by Contents – somewhat out-of-Focus Master Hagen II, contrary to what has been said by others.. Still it seems justified to ask, as s.b. did above, why for instance, the French nationally prescribed Basic Training course did not make it in contrast, up to now. At least, some reasoning, some transparency on whether there has been sound discussion in the prep comittee or similiar on why some course was added and some other was not, should/could be asked for. – Or whether it was just a matter of lobbying?
As a general remark: Myself not being a German patent attorney, as is fair to say, I enrolled for 2 years in LLB distance study at Notthingham Trent – a unique and enlightening experience, even as a qualified EPA having obtained 6 months of legal Training in Master`course in Switzerland, in the beginning..Nowadays, I would recommend a GDL/Conversion Course to everybody. I found the case law & reasoning approach of the English legal method & emphasis on the hierarchical interaction of national with international/European law, right from the onset of study, to be a valuable complement to my continental basic legal training. Any unified future European Training might well benefit from implementing in some resources from English Basic Legal Training in my opinion, given diverse Background of future participants, rather than focusing too narrowly on the immediate subject and purpose, the UPC.
Does anybody know what is going to happen to the Ceipi EPLC course, if in future time, it is a must have to take the new European Certificate course? Will he be discontinued?
I am preparing a response to the proposals on the draft on the European Patent Litigation Certificate.
In my response, which I will also address to the European Commission, the European Parliament, and every IP information website/publication I can think of, I will set out clearly why the current list of Rule (12) is the obvious result of lobbying and not a selection of the most sensible courses for a grandfather Rule.
I am familiar with the French and German courses and it is obvious that Hagen I is FAR from covering the requirements of Rule (3), as it is the “basic” FR course at the Ceipi. It is evident those have been selected as a result of lobbying from our FR and DE colleagues and this should be pointed out and publicized as much as possible.
I am, however, not familiar with the four UK courses. I will study the curricula in details, though would appreciate some indication on which of those courses if mandatory in the training of a UK patent attorney (as is, for instance, Hagen I in Germany) and which of those courses, in your opinion, satisfy the requirements put forward by Rule (3) of the draft on the European Patent Litigation Certificate.
Your help will be very much appreciated.
I think it is a scandal that everyone in the profession clearly know what is being pushed through and still no strong voice is being heard against a measure that is clearly not to benefit the future Court, nor its users.+
Thanks,
Edoardo Feira