As highlighted in our post earlier this week the Preparatory Committee’s proposal for the rules for the European Patent Litigation Certificate were agreed at its early September meeting. These rules have now been published (here) along with an Explanatory memo (here). IPcopy has generated a tracked changes version of the latest proposal showing the changes to the rules since the consultation document (tracked changes document here).

As noted below (and in CIPA’s note sent yesterday to the profession) the proposal as agreed by the Preparatory Committee represents a great deal for the UK patent profession and a huge pat on the back is due to those at CIPA, the UKIPO and elsewhere for their efforts on this front. Based on some of the responses received to the consultation IPcopy can only presume that the CCBE and the IPLA aren’t quite so enamoured with the proposal…..hey ho.

So, what of the Preparatory Committee’s proposal? Here are IPcopy’s highlights and comments:

• the rules are marked as “draft” on the UPC website. We’re not certain but presume this is because the rules have to be adopted by the Administrative Committee rather than the Preparatory Committee and the AC has not been formed yet.
• the Explanatory memo notes that the “other appropriate qualifications” that EPAs may use to prove their qualifications by means other than the EPLC are important because “the EPLC won’t be available before the entry into force of the UPC Agreement“.
• the transitional provisions in rule 12 now apply for one year only from the entry into force of the UPC Agreement rather than the previous three year period provided in the consultation version of the rules. This is important for the reasons noted in the next two points below.
• Anyone currently training to be an EPA in the UK may want to consider the benefits of taking the required exams as soon as possible. The UPC Agreement may come into force at some point next year (IPcopy would suggest the back half of next year is a possibility). This means the transitional provisions would run until some point in 2017. By that point in time an individual wanting to take advantage of the transitional route to UPC representation will need to have: passed all the EQE exams (so consider taking all four exams rather than splitting them up); got themselves onto the UK patents register (use those exemptions for P3 and P4 if necessary!); and, will need to have obtained the litigation certificate. On this last point, IPcopy understands (but don’t take our word for it) that you can apply to take the course prior to passing your UK exams though the certificate won’t be awarded until you have actually passed your Finals exams. If it looks like time may be getting tight then possibly consider taking the litigation certificate course early.
• existing UK EPAs who hold one of the certificates mentioned in rule 12 will only have one year to apply for representation rights at the UPC.
• the list of courses provided in rule 12 was thought by some people to be too focussed on the UK, France and Germany. IPcopy notes that this list has been expanded to include courses from the Netherlands, Hungary, Italy and Poland. IPcopy would be interested to hear from readers in these additional countries how many of the local national patent attorneys have taken these courses.
• as far as the UK position is concerned then reference to the Brunel and Bournemouth courses has been removed to be replaced with reference to the three litigation certificates issued by IPReg. Given that all UK national attorneys on the register prior to 31 December 2012 have been issued with the Intellectual Property Litigation Certificate (see here) then this means that the bulk of the UK profession will be able to take advantage of the transitional provisions. Presumably CIPA or IPReg will be arranging for all these attorneys to receive confirmation of this along with their certificates?
• the EPLC course is now listed as being 120 hours of lectures and practical training. So it would seem that while the course length has not been changed it has been clarified that candidates won’t need to spend the entire course in the lecture hall.
• under rule 11 IPcopy notes that the law diploma route to gaining UPC representation rights is not limited by the one year transitional period of rule 12. Perhaps there will be a discussion within CIPA as to whether to provide an EPLC course or an appropriate LLM?

Mark Richardson 10 September 2015