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Friday, 12 June 2009

Those European patent court proposals: the CIPA response

The IPKat received a press release earlier this week which he has only just got around to reading. It's from the Chartered Institute of Patent Attorneys (CIPA) and was issued in response to a newspaper report that EU industry ministers had agreed formally to ask the European Court of Justice for its opinion on a potential overhaul of patent litigation in Europe (on which see here). The press release goes as follows:

"According to Vicki Salmon, chairman of CIPA’s litigation committee, the ministers’ request highlights the efforts being made to set up cheaper, more streamlined procedures. “This proposal deserves support,” Vicki Salmon says, “but, as ever, there are some devils in the detail.” [The IPKat would like to see the detail, but it just doesn't seem to be available to peasants and pussycats]

According to CIPA, achieving the confidence of the business community, quickly and effectively, will be critical to the success of any European patent litigation court ['quickly' is an interesting concept. If the court came into being tomorrow, how many months/years would elapse before the first full trial would take place?]. Questions of language [if it isn't English?] and local interests [i.e. will patentees in some countries be happy to lose the advantage of litigating at home against a foreign invader?] will continue to be topics for debate, affecting such confidence.

In some countries there is a wealth of experience of patent litigation - not necessarily always leading to the same outcome in the courts as judges can disagree - while in others there is almost no experience - indeed in some, literally none. The current proposals are for a three-judge court, made up of two local judges and one from another jurisdiction. That third judge may well speak a different language and have a different legal background from the two local judges, which could lead to misunderstandings i.e. the third judge misunderstands that he is there for purely cosmetic or politically expedient purposes?]. Litigants may choose, for tactical reasons, to litigate in a state where there is little experience [Indeed. It's sometimes said that infringers sometimes choose to do the same ...]. This could seriously undermine confidence and consistency in a court in its infancy and, if not lead to a still birth, leave it significantly disabled [Another problem is over-confidence, rather than the lack of it]. “It is highly desirable that as diverse a selection of judges with real practical experience of patent litigation is used until consistency is clearly and demonstrably established,” says Vicki Salmon.

CIPA is arguing that, if a European patent court system is to be more cost-effective, then it is also important to consider who will be representing the parties. In the UK, qualified patent attorneys can bring cases in the Patents County Court, the High Court (Patents Court) and the Court of Appeal. Although the current proposals include rights for patent attorneys to represent their clients, there is considerable pressure from lawyers across Europe for the new court system to be closed to specialist IP attorneys, regardless of who can do the best job for the client [The Kat hopes that this issue is resolved in terms of reality rather than principle, since any proposed system is only as good as the people who work it. Patent attorneys have come a long way since they first obtained rights of audience in the UK and litigants should be entitled to instruct them if they so wish]".

5 comments:

Anonymous said...

So, CIPA wants the court to have as many English judges as possible, just like the Germans would like the same court to have as many German judges as possible. How about setting high recruitment requirements, regardless of passport?

Anyway, looking at the different draft proposals that have been published for the European Patent Court, there indeed seems to be quite a lot of behind-the-scenes wrangling (backstabbing, even) regarding the right to represent. Some lawyer associations clearly would like to keep it open to all lawyers, regardless of specific IP (never mind patent) experience, but to exclude patent attorneys without a law degree. European patent attorneys should also be careful to present a united front: whereas British and German qualified patent attorneys have the right to bring cases in their patent courts, this is rarely the case in other countries. Any push to open the court to patent attorneys "qualified to represent their clients before a national court" could thus create a split between those two nationalities and the rest.

Anonymous said...

There is one possible solution. Limit the right to represent to those who have passed a qualifying examination specific to that court (preferably open both to legally qualified candidates and to the same kinds of technically qualified candidates as the profession of patent attorney).

For the interim period employ a grandfather clause allowing for an interim period after the coming into existence of the new court, the registration for practice before that court of lawyers who can represent patent matters in the state where they practice, as well as national patent representatives who are entitled under the relevant national law to represent clients' interests in court with regard to patent matters in the state where they practice.

This would ensure a pool of experienced people who could start the system off and subsequently provide newly qualified representatives specifically trained to deal with this court when candidates start passing the new examinations.

One disadvantage would be that it would disadvantage representatives of certain nationalities in states where national patent agents cannot represent in court, it could be extended to all nationally qualified patent agents (in European states), although here the risk exists that people inexperienced in court proceedings might be allowed to represent cases. However, any disadvantages of the transitional measures would gradually fade with time as more and more candidates pass the new examinations and qualify.

However, the grandfather clause would probably remain relevant for some time due to accession of new member states and the registration via this clause of some younger representatives who would remain active for some time (although many of these might choose to take the examinations anyway).

It is certainly a point which needs careful consideration. It would be useful to study the EQE and the transitional arrangements for the European representatives as a model (both of what to do and what to avoid).

Anonymous said...

How many in this forum think passing the EQE would be a sufficient legal qualification for a right to represent?

Japser said...

To first Anonymous:
There are more patent attorneys who are allowed to bring their client's case to court than British and German. In any case Dutch patent attorneys and I recall Polish patent attorneys had the same privilege.
Interestingly enough, the Dutch government lobbied for the EPLA not to allow patent attorneys to represent their clients and to reserve this privilege to attorney-at-law only.

As to last Anonymous a question in return: while preparing for and having passed the EQE, how much do you (have to) know on infringement?
No competence = not fit for practice = not qualified.

The CEIPI course on patent litigation (aimed at patent attorneys) could perhaps result in a qualification to represent clients in courts.
In my opinion, a national qualification - provided that qualification allows you to represent a client in court on a national level - should allow you to pracie in this case anyway..

Anonymous said...

To Japser:
I am not sure where you got the information from that Dutch patent attorneys are allowed to bring cases to court, but that is not the case. The lawyer brings the case, the patent attorney has the right to speak during a hearing.

To all:
this seems to get into a discussion of choice between lawyer and patent attorney; how about the two of them working together and each operate from own strength. This is being done in Holland for years now, and it works perfectly well.

Could it be an idea to have a self-regulating system and to set up an association, or have the existing EPLA in place for it, with qualification criteria, so as to have clarity (amongst us and possible clients and last but not least the courts) with respect to the indisputed competence of anyone bringing a case before the UPLS courts.

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