The Legal Working Group of the Preparatory Committee has recently 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.

At a recent CIPA seminar The Hon Mr Justice Birss suggested that the best way to influence the Prep Committee’s position on the content and form of the EPLC would be to present a united front with other countries in Europe. To that end IPcopy would be interested to hear from readers in other countries, e.g. Ireland, Sweden, the Netherlands, regarding their reaction to the content of the EPLC proposal. Additionally if any reader wants to share their response to the consultation then IPcopy will be happy to start a consultation round-up post.

The comments below form the basis of this ipcopywriter’s response to the EPLC consultation. These are personal views.

Response to Consultation – General Comments

In part, Article 36(3) UPCA states (my emphasis added):

The Court fees shall be fixed at such a level as to ensure a right balance between the principle of fair access to justice, in particular for small and medium-sized enterprises, micro-entities, natural persons, non-profit organisations, universities and public research organisations and an adequate contribution of the parties for the costs incurred by the Court, recognising the economic benefits to the parties involved, and the objective of a self-financing Court with balanced finances. The level of the Court fees shall be reviewed periodically by the Administrative Committee. Targeted support measures for small and medium-sized enter­prises and micro entities may be considered.

It is submitted that part of providing “fair access to justice”  should be that parties are able to choose their UPC representative from as wide a pool of legal practitioners as possible. Against this background it is further submitted that the current EPLC proposals, especially in regards the content of the course and the limited nature of the transitional measures, will potentially prevent a large number of EPAs from gaining rights of representation and therefore potentially prevent parties from gaining access to justice.

Suggestions that EPAs will take on cases that they are unqualified to prosecute are, in this writer’s opinion, unwarranted and unfounded. It is my belief that EPAs will know the limits of their capabilities with respect to the UPC and will therefore advise clients on a case by case basis whether they can be of assistance.

In particular it is suggested that SMEs may have limited funds available for instructing additional legal representation (over and above their existing patent attorneys) and should at least have the ability to ask their own EPA to represent them (this would only be possible of course if the EPA in question felt they were capable of representing their client in the action in question).

Another particular area of concern is the interplay between the EPO Opposition and UPC revocation procedures. On paper there appear to be many similarities between the two procedures and yet an EPA will, under the proposals in question, be prevented from representing their client as a particular patent moves from the period of 9 months after grant to 9 months + 1 day after grant.

In order to provide access to justice for users of the UPC it is submitted that EPAs should be provided with a route to achieving representation rights without being unduly burdened with a lengthy training course of 120 hours of study, e-learning and examination.

Content of the Course (Rule 3)

The UPCA does not stipulate the content of the EPLC course. Instead this is defined in Rule 3 of the proposal. For the reasons noted below it is submitted that parts (a) through (f) of Rule 3 should be removed.

Particular attention is drawn to the training that the technically qualified candidate  judges for the UPC are to receive. According to a talk given by Oliver Varhelyi on 4 July in Paris (Unitary patent and Unified patent court conference) the training needs of technically qualified judges were listed as:

• No need for training in patent law
• Training in civil procedure (principles of procedural law and UPC rules of procedure)
• Language training

It was also disclosed in the above talk that 90% of applicants for the technically qualified positions are EPAs. It was further noted that these applicants were all deemed eligible, i.e. no need for additional training! Presumably therefore the above topics are all that are required to sit as a technical judge in the UPC. The EPLC should not require additional training topics for EPAs over and above the topics that the judges are required to be familiar with.

Therefore, it is submitted that parts (a) to (f) of Rule 3 should be deleted. Arguably parts (g) and (h) could be deleted as well. Based on the topics that the technical judges are to receive it is submitted that the EPLC course should only require knowledge of the principles of procedural law and the UPC rules of procedure. It is also suggested that as a result the course length should be adjusted as noted below.

Duration of the Course and examination requirements (Rule 4)

If the course content is adjusted as noted above then it is suggested that the course duration should be shortened.

The course should comprise a number of modules for which exemption for specific elements may be approved if appropriate learning has occurred elsewhere. For example, after the transitional measures period has ended the courses listed in Rule 12 should be treated as accredited prior learning.

For UK candidates, UK Finals exams (P2 and P6) should provide exemption for certain elements of the course.

Transitional measures (Rule 12)

From the UK perspective it appears that the list of courses in Rule 12 is incomplete. For example it is suggested that the Birbeck College course from the mid 1990s should be included as being equivalent to at least one of the courses currently listed.

In the UK patent attorneys need to sit two levels of exams, a Foundation level and a Finals level. At the Finals level, UK registered patent attorneys are required to sit a number of Finals papers including a paper that tests detailed legal practice knowledge and abilities and also a paper that tests a candidate’s ability to assess infringement and validity in the context of a fictional infringement scenario. It is suggested that these papers should also provide UK patent attorneys (who have both EPA and national UK patent attorney status) with a further “appropriate qualification”.

For a UK patent candidate there are two routes that may be followed on the way to the Finals level. A candidate may follow either the modular Foundation exam route or one of the available university courses which provide exemptions from those exams. It is noted that the university courses have been designed to be equivalent to the Foundation exams and yet it is only the equivalent university courses (e.g. QMW/Bournemouth) that are included in Rule 12 and not the university courses and the Foundation papers.

It is therefore my contention that the EPLC proposal currently discriminates against particular individuals within the UK profession, i.e. those UK-EPAs who followed the Foundation exam route to qualification as a UK patent attorney rather than a course route. It is noted that in many cases the choice of route is determined by the firm and not the individual and so individuals may, under the current proposals, find themselves ineligible to take advantage of the transitional measures purely on the basis of the firm they trained at. From a UK firm’s perspective it is noted that specific firms will probably have chosen to use the Foundation route for their trainees rather than the university course route for their own business reasons. However, now, through no fault of their own, these firms will find that their employees are unable to take advantage of the transitional measures.

It is therefore suggested in light of the above that the transitional measures are amended to reflect that patent attorneys in the UK may use either the Foundation route or university course route to qualification. The two routes are regarded as equivalent within the UK profession and should be treated as such with the EPLC proposal.

As a final observation,it is believed that the university course route to qualification in the UK is relatively recent (early 1990s) and so members of the UK profession who trained prior to this period will be excluded from using the transitional measures as currently worded. This is considered another reason for including both qualification routes in the EPLC proposal.

Mark Richardson 15 July 2014