Before the summer recess the Unified Patent Court Preparatory Committee ran a consultation on the European Patent Litigation Certificate (EPLC). Regular readers will recall that this certificate links to Article 48 of the UPC Agreement which states that parties may either be represented by lawyers authorised to practice before a court of a Contracting Member State or by European Patent Attorneys who have “appropriate qualifications such as a European Patent Litigation Certificate”.

The consultation closed on 25 July and, according to the latest Preparatory Committee roadmap, a revised version of the EPLC rules is expected early 2015. In the meantime one of our Twitter followers (thank you Guillaume S./@EPpatent) kindly pointed us at the Bristows UPC website where a few of the responses to the EPLC consultation are hosted.

Given that these responses include representatives from patent attorneys and also from lawyers we thought it might be fun to see how far apart the responses were!

1) Council of Bars and Law Societies of Europe (CCBE) – here

OK, to start we have the response from the CCBE who represent the bars and law societies of 32 member countries and a further 13 associate/observer countries – apparently reaching around a million European lawyers!

It might be worth pointing out at this point that according to the EPO website there are just 11228 EPAs, that’s just over 1% of the total reach of the CCBE. Probably worth bearing in mind as we look at the issues raised in the responses.

In its opening remarks the CCBE suggest that infringement proceedings will encompass other areas of law in addition to patent law and list the enforcement directive, antitrust law, competition law, law of torts and general rules of law as examples. They suggest that all representatives at the UPC should have detailed legal knowledge of all relevant areas of law.

A reference is then made to Article 48(2) UPCA and that the EPLC as drafted would appear to grandfather in around 7000-8000 EPAs. It is noted by IPcopy that the total number of UK/FR/DE EPAs equals 7116 according to the EPO.

CCBE believe that the current form of the EPLC rules effectively circumvents the provisions of Article 48 UPCA.

Content of the EPLC course (rule 3). The CCBE suggest that a special focus on sections (a)-(e) of the curriculum is important (compare this with CIPA below!) and also suggest the addition of litigation skills and advocacy skills to the curriculum.

Duration of the EPLC course (rule 4). 120 hours is regarded as insufficient.

Law diplomas (rule 11). This rule states that EPA with a bachelor or masters degree in law or who passed an equivalent state exam in law shall be deemed to have met the requirements of Article 48(2) UPCA. The CCBE notes that this rule applies indefinitely and suggest that it covers too wide a range of law qualifications. They suggest that it should be limited to qualifications that permit an EPA to appear in all Courts in their home jurisdiction. In the UK this would only cover around 100 EPAs.

Other qualifications (rule 12). The relevance of all the courses listed in this rule are called into doubt and it is noted that a number of the listed courses have no substantial litigation element. The CCBE are clearly not happy about the potential reach of current rule 12. They also suggest deleting 12(b) which allows an EPA into the UPC if they have represented a party without assistance from a lawyer.

2) European Patent Litigators Association (EPLIT) – here

EPLIT was formed around a year ago in light of the fact that the UPC Agreement provides for UPC representation by EPAs. It is one of EPLIT’s main objectives to promote EPA participation at the UPC. In their introduction, EPLIT highlight that an objective of the UPC was to be accessible to SMEs and the like (Glad someone still remembers this!). In their view it is necessary that EPAs can represent parties in the UPC so that clients have a range of options to choose from.

“Other appropriate qualifications” – EPLIT suggest that this term be clarified to ensure that EPAs who can already represent at a national level (either alone or in a team with lawyers) can represent at the UPC.

Law diplomas (rule 11). EPLIT note that patent attorneys in the UK, Germany, Austria, Hungary, Czech Republic, Poland, Italy, France, the Netherlands, Spain are required to take exams that could be considered “state exams”. They suggest that EPAs who possess such a qualification have the additional qualifications needed to represent parties at the UPC. It seems likely to IPcopy that such a proposal would not find favour with the members of the CCBE!

Other qualifications (rule 12). EPLIT questions why these provisions are only regarded as transitionary and also suggests that the current form of the rule is discriminatory for a number of reasons, e.g. because the courses listed are only in the UK, France and Germany, because the courses listed are relatively new ones only and also the fact that some patent attorneys will be able to take the courses and some will not.

The restriction in paragraph 12b “without the assistance of a lawyer” is regarded as “absurd” and it is pointed out that English solicitors who can represent clients by virtue of the provisions of Article 48(1)UPCA would not meet the requirements under Article 48(2)UPCA because they conduct litigation in conjunction with barristers!

3) Intellectual Property Lawyer’s Association (IPLA) – here

IPLA acts as a representative body for UK law firms with IP practices who which to lobby for improvements in IP law. The IPLA response shares themes from the CCBE response in relation to the level of qualifications needed for an EPA to be allowed to represent clients at the UPC. There is more details analysis however of the course content of the courses listed in rule 12 of the EPLC rules and also some specific suggestions for measuring the duration of the course.

The IPLA’s preliminary remarks once again highlight that EPA training does not cover any litigation conduct training and that it is insufficient for acquiring the independent right to represent clients. A couple of anecdotes are dropped into page 2 of the response suggesting how two colleagues who trained as solicitors after gaining EPA qualifications believe that their EPA qualifications alone were not sufficient to handle substantial litigation.

Course content (rule 3). The current content is regarded as broadly OK but there are considered to be two important omissions: litigation ethics and litigation skills.

Course duration (rule 4). The minimum course duration is regarded as ambiguous and a suggestion is made to use the European Credit Transfer System (ECTS) to define the course duration and the level of study to be defined in accordance with the European Qualifications Framework (EQF). A suggestion of 30 ECTS credits at EQF Level 7 is made. By way of comparison the Bar Professional Training Course which lasts for 1 year comprises 60 ECTS credits at EQF Level 7.

Other qualifications (rule 12). The CEIPI Diploma in Patent Litigation in Europe and the Nottingham IP Litigation and Advocacy course seem to get the thumbs up from the IPLA but the remaining courses are regarded as not appropriate and should be deleted. It is suggested by the IPLA that around 500-600 EPAs will have taken the two litigation focused courses and this “would provide the court with a significant cohort of EPAs spread across the EU who could undertake litigation in the UPC”.

There then follows a large analysis of the “very small” number of EPAs and national patent attorneys who handle litigation. This analysis, in IPcopy’s opinion, seems to conveniently overlook the fact that the UPC will effectively provide an “opposition option” via a revocation only action that is not limited to 9 months from grant. It seems conceivable from our point of view therefore that the number of EPAs wanting to use the UPC for this purpose will be higher than a straight analysis of “patent attorneys at the national court” might suggest.

4) Chartered Institute of Patent Attorneys (CIPA) – here (warning: this one’s 141 pages long!)

The response from CIPA is a bit of a monster but it covers a lot of ground. As well as a longish opening remarks section that deals with some points to remember (Access to justice, the role of revocation proceedings as an opposition substitute, rights of UK patent attorneys in front of UK courts), the CIPA response also includes detailed proposed wording changes for the EPLC rules and a number of other appendices (such as UK patent attorney and litigator codes of conduct, UK Foundation level syllabus, Rights of UK patent attorneys to conduct litigation and advocacy to name but a few).

The opening remarks make a strong case for the knowledge base of patent attorneys to be balanced against that of lawyers who may know general law and litigation concepts but be light on patent related knowledge. Particular points raised against the EPLC rule draft include:

Course content (rule 3). CIPA suggests that the current content of rule 3 includes topics which UK EPAs will already have learned from their training and that the course will be “an inefficient re-treading of old ground for many practising EPAs”.

Course length (rule 4). The course (120 hours) is regarded by CIPA as overly long and it is proposed that for people who have passed the appropriate UK exams exemptions from from specific sections of the proposed syllabus could be granted which would shorten the study required.

Law diplomas (rule 11). The lack of a concrete definition of an “equivalent state exam” in law is raised again. The right of UK attorneys to appear at the Intellectual Property Enterprise Court (IPEC) is highlighted along with the ability to appeal decisions of the UKIPO to the High Court.

Other qualifications (rule 12). CIPA proposes additional courses that should be added to rule 12(a). These include the postgraduate certificate in IP law at Manchester University and the Diploma in IP Litigation course run by Birbeck College in 1995. The restriction of the wording in rule 12(b) that a patent attorney should have run cases on their own without the assistance of other qualified lawyers is also highlighted and alternative text proposed.

5) IP Federation – here

The IP Federation represents IP intensive companies in the UK (e.g. BAE Systems, BT, Dyson, GSK, IBM, Shell to name a few of their members). As such the IP Federation is representing parties that may themselves be plaintiffs or defendants in IP court actions. The availability of representation at the UPC therefore has a direct impact on them.

The IP Federation response points out that although the UPC Agreement provides two sources of representation the proposed EPLC does not currently exist and so the pool of “grand-fathered” representatives will be important at the outset of the new court.

Law diplomas (rule 11). The IP Federation favours adding a further category under rule 11 so that the grant of litigation (or advocacy) rights before a national court having jurisdiction over both infringement and validity would be considered to be an appropriate qualification under Article 48(2) of the UPCA.

Other qualifications (rule 12). The IP Federation suggests that it would be “more in keeping with the balance of availability against deemed competency to populate that pool directly with European Patent Attorneys who are already deemed competent to act as representatives before their respective national court, since this is effectively the principle already being used under Article 48(1).” So it seems the IP Federation would prefer to see rule 11 being used as the route for EPAs gaining access to the UPC rather than the other qualifications option of rule 12. However, it is suggested that if the rule 12 courses are retained then they should be listed together with specification of the relevant competences and skills which they bring in order to be qualifying.

The IP Federation’s comments end with a note on continuity in representation. It is suggested that EPAs who can today represent parties before the national courts should continue to be able to represent their clients in front of the UPC.

Summary

The responses received are interesting in so far as there seems to be very little middle ground between the responses at (1) to (4) above (either “it’s too easy for EPAs to get representation rights” or “it should be even easier for EPAs to get representation rights“).

The Preparatory Committee and the UPC working groups therefore seem to have a difficult task ahead in producing an updated draft. One thing seems fairly certain though – it’s not going to be possible to please everyone!

Mark Richardson 30 September 2014