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Representation at the UPC – feedback from Rules of Procedure Submissions

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Unified patent courtA CIPA/IPO meeting back in January (covered in posts here and here) looked into the issue of representation in front of the Unified Patent Court (see Rule 286 of the Rules of Procedure) and in particular whether UK patent attorneys will automatically have that right, might be “grandfathered” in or might have to sit some sort of additional qualification.

Back in October last year IPcopy collated a few of the submissions sent in response to the public consultation on the Rules of Procedure of the Unified Patent Court and last week the 16th draft of the Rules of Procedure published accompanied by a handy “comprehensive digest”  that explains some of the reasons behind the changes to the Rules. We thought we’d take a quick look at both the original submissions and the comprehensive digest to see whether any of the respondents touched on this issue as well.

Out of the 12 submissions we listed back in October, three addressed the issue of representation and the comments made by the Association of IP Professionals in Swedish IndustryBristows LLP and the IP Federation (the IP Fed paper downloads as a PDF document) are noted below. There are also a fair number of comments in the digest document (though the three listed above do not appear to be there).

Comments on Representation from original submissions

Association of IP Professionals in Swedish Industry (SIPF)

During his summing up of the CIPA/IPO meeting The Hon Mr Justice Birss suggested that the way for the UK to win the argument about representation was to find an ally in Europe. He then suggested Sweden.

Clearly he was on to something here as the Swedish IP Professionals’ submission notes:

Representatives in patent litigation in Sweden are not required to be members of the Swedish bar or even to be lawyers. Thus, i.a patent attorneys are entitled to represent parties before Swedish patent courts. In practice, this operates without difficulties since the parties take care of selecting competent representatives and formal requirements do anyhow not secure the skill and experience needed for patent litigation.

Parties should have the right to choose representatives as freely as possible.

The submission however then suggests that an EP Litigation Certificate should not be “overly burdensome” and suggests a programme of only a week or equivalent experience. We’ll leave you to decide if the proposed course for the EP Litigation Certificate of 120 hours is overly burdensome or not! [For more details on the EPLC see our post here].

These views align fairly well with those expressed in the CIPA/IPO meeting. Perhaps some cooperation between the two countries should be initiated to tackle this important issue.

Bristows LLP

The Bristows submission reflects comments that Bristows have heard via their clients and also various groups such as the CCBE, EPLAW, AIPPI and others.

On the issue of representation at the UPC their submission suggests under the sub-heading of Procedural Fairness the following:

Limiting representation, especially in the early years, to lawyers with substantial experience of patent litigation, and ensuring that their behaviour is to a consistent and high standard, will also do much to enhance the court’s credibility and encourage its use. This will also help the panels of judges as they get to grips with a new system.

IP Federation

The IP Federations submission notes (see page 11 of the submission) that there are around 100 patent attorneys* with patent attorney litigator qualifications and asks if they will be classed as “lawyers” under Article 48(1) of the UPC Agreement. It also notes the smaller number (which was suggested as 6 patent attorneys at the CIPA/IPO meeting) who have attained Higher Courts Advocacy Certificates which provide rights to appear in all UK higher courts up to and including the Supreme Court.

Comments from the “Comprehensive Digest”

Swedish Patent Attorneys

A number of respondents raised an issue with the reference to jurists authorized by the Swedish Patent Attorneys Board. In the digest the Committee notes:

This Rule and the comments raised were considered carefully by the Committee. A number of proposals were debated to address the concerns raised about the specific mention of jurists authorised by the Swedish Patent Attorneys Board, and of other patent attorneys’ ability to act before the Court.

After discussion, it was agreed to remove the specific mention of Swedish jurists and to add a reference to Article 1 of Directive 98/5/EC.

A note would be added to the Rule that the issue remains to be dealt with.

UK Comments

A number of comments originate from UK patent firms. Mathys & Squire for example contend that all EPAs should be authorized to practice before the UPC. A submission from 8 patent firms suggests that UK patent attorneys would qualify as “lawyers” within the meaning of Article 48(1) UPCA. This comment is, however, later shot down with the Committee noting that

If the proposal to refer to Directive 98/5 is adopted then this attempt to qualify as a “lawyer” fails. [ipcopy notes that this reference has made it into the 16th draft of the Rules of Procedure].

The group of 8 patent firms then goes on to suggest that the “other appropriate qualifications” that are mentioned in Article 48(2)UPCA should be fully characterized and lists the CEIPI diploma in European patent litigation, the Haagen course, the Nottingham Law School course or equivalent in other countries. Interestingly, these three courses are similar, but not the same, as the ones listed in the draft paper that discusses the EPLC. This group concludes by suggesting that practical experience (i.e. participation at opposition proceedings at the EPO) should also be a route to gaining participation rights at the UPC.

CIPA proposed a couple of alternative definitions for rule 286(1) but the Committee again noted that these proposals would fail if the reference to Directive 98/5 is adopted.

This section of the rules has clearly drawn a lot of comment. The European Patent Litigation Certificate is now being discussed and, as noted in our earlier post, there is a meeting on 18 March when the current proposed draft paper that relates to the EPLC and other qualifications will be discussed.

Mark Richardson 13 March 2014

*We think the figure may be closer to 70 such UK patent attorneys based on the comments in the CIPA/IPO meeting

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