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European Patent Litigation Certificate – Public Consultation

Keltie LLP

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Unified patent courtAs noted yesterday the Legal Working Group of the Preparatory Committee has launched a consultation on their proposals for the European Patent Litigation Certificate. The consultation timeframe is relatively short and runs until Friday 25 July 2014. Comments are to submitted electronically to secretariat@unified-patent-court.org. The consultation document can be found here and an explanatory memorandum can be found here.

Our initial thoughts on the consultation document (with reference back to the earlier version of this proposal) are noted below. We would welcome your thoughts in the comments section.

Course duration and e-learning

The course length is still set at 120 hours. Previously E-learning facilities were “not excluded as a supplementary part of the program”. Now, however, “E-learning facilities are encouraged as an integral part of the Course. However, practical training always requires personal participation.” (see Rule 5(2)).

So it now seems that the 120 hours can be made up by taking advantage of e-learning which should make the course that much easier to fit in around everything else (120 hours equates to around 20 full days of 6 hours).

Content of the course

The content of the course has however been tweaked. The patent specific/unitary patent specific parts of the course are reproduced below. Changes from the previous version are underlined and our comments in are brackets.

e) enforcement of patents, providing knowledge of Directive 2004/48 (EC) on the enforcement of intellectual property rights and relevant case law of the CJEU; [this paragraph is all new and relates to the IPR Enforcement Directive. Wikipedia entry on the directive is here]

f) unitary patent protection, providing advanced knowledge of Regulations 1157/2012 (EU) implementing enhanced cooperation in the area of the creation of unitary patent protection and 1160/2012 (EU) implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements as well as the Rules relating to unitary patent protection; [the Regulations are now referred to in a more formal manner. However the reference to Rules relating to unitary patent protection is new. We presume this refers to the EPO’s rules on unitary patent protection, an old draft of which can be found in a couple of previous posts – Part I and Part II)]

g) a comparative overview on patent infringement proceedings and revocation of patents in Contracting Member States; [the previous version of this section referenced “patent nullity” instead of “revocation” and did not indicate that a comparative overview was needed]

h) the operation of the Unified Patent Court, providing advanced knowledge of the Agreement on the Unified Patent Court and the Unified Patent Court’s Statute;

i) litigation before the Unified Patent Court, providing advanced knowledge of procedures, practice and case management before the Unified Patent Court, with special regard to the Rules of Procedure of the Unified Patent Court. [the reference to the Rules of Procedure has moved from para. h to this section. The phrase “special regard” has been added]

Other appropriate qualifications (the “Grandfathering” clause)

According to the explanatory memorandum: “According to Article 48(2) of the UPC Agreement, EPAs may prove their qualifications to represent parties before the UPC by other means than the Certificate. This is particularly important, as the Certificate won’t be available before the entry into force of the UPC Agreement. Therefore, the recognition of other appropriate qualifications is necessary in order to allow the UPC to start with a sufficient number of qualified EPA representatives. Also, certain robust legal qualifications render acquisition of the Certificate unnecessary.”

The other means referred to above includes the list of other qualifications in Rule 12(a) that, for a transitional period of 3 years from entry into force of the UPC Agreement, an EPA can use to request entry onto the UPC representation list. In the previous version of the proposal the other qualifications included an appropriate CEIPI course, a FernUniversitat in Hagen “Law for patent attorneys” course and the Nottingham Law School IP Litigation & Advocacy course.

This list has now been expanded to include:

  • Queen Mary & Westfield’s courses “Certificate in Intellectual Property Law” and “MSc Management of Intellectual Property”
  • Brunel’s “Intellectual Property Law Postgraduate Certificate” course
  • Bournemouth’s “Intellectual Property Postgraduate Certificate” course

It is noted that these courses are designed to exempt patent trainees from the UK’s Foundation Level exams. It therefore seems strange that the exams they are designed to secure exemption from are not on the list. When I was at QMW on the Certificate course there was a general feeling that private practice firms tended to use the Foundation exam route whereas in-house IP departments sent students to QMW. If this is correct then there’s a whole chunk of the UK profession who are excluded from gaining representation under this grandfathering clause on the mere basis of the firm they chose to pursue their career in.

Rule 12(b) has been tightened up in the latest proposal. Whereas previously entry onto the list could be gained by virtue of having represented a party in two infringement actions in the four years before the application to enter the list, now a person is required to have represented a party “on his own without the assistance of a lawyer” in three patent infringement actions in the five years before the application to enter the list.

Quite a bit to digest here. As always, we’re interested to hear your thoughts….

One outcome that would result from this proposal, assuming it was finalised in this form, would be that any students either at, or recently graduated from, QMW/Bournemouth/Brunel would have strong motivation to throw the kitchen sink at completing their EQEs before around late 2018!

CIPA seminar – CIPA will be holding a seminar on Tuesday 24 June Wednesday 2 July 2014 (Football clash!) on this subject at CIPA Hall. The seminar is to start promptly at 5pm and finish arond 6.30pm. Vicki Salmon (chair), Sir Colin Birss and an IPO representative will be on the panel. The event booking can be accessed here.

Mark Richardson 18 June 2014


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