For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 16 January 2014

An Audience with… You?!

This one is about rights of audience in the UK. A right of audience is a right to conduct advocacy before a judge or equivalent adjudicator in a court or tribunal (rather than the more general right of conducting litigation).

Not all of the different types of IP practitioner in the UK automatically have the right to appear in all types of UK court. When the UK’s Intellectual Property Enterprise Court (IPEC) – previously a specialist wing of the County Courts (when it was called the Patents County Court) – was incorporated into the High Court, it appears this had the inadvertent effect of preventing some solicitors from appearing there. But the Law Society has stepped in, and is going to sort things out. News of this, and an overview of rights of audience in the English and Welsh courts, is below.
Courts and professions
Starting from the top and working down (and simplifying and leaving out certain types of courts with no offence to those courts intended), the main English civil courts comprise the UK Supreme Court; the Court of Appeal; the High Court and the County Courts. The “inferior” County Courts generally hear lower value cases with big money cases and those of more general public importance reserved to the higher courts.
There are a number of different types of lawyers in the UK that might wish to appear as advocates before these courts. The distinctions may seem alien to those of you practising elsewhere, but the following are five distinct and differently regulated professions: barristers (regulated by the Bar Council through the Bar Standards Board); solicitors (regulated by the Law Society through the Solicitors Regulation Authority); legal executives (Chartered Institute of Legal Executives); patent attorneys (Chartered Institute of Patent Attorneys through the Intellectual Property Regulation Board, or IPReg) and trade mark attorneys (Institute of Trade Mark Attorneys through IPReg) (the latter two professions are both sometimes referred to as agents). There are some other professions too – such as notaries public and costs lawyers – but I’m going to leave them out.
Who can appear where?
To simplify a not entirely straightforward statutory and regulatory framework, a person will have a right of audience in the UK where he or she is authorised so by the appropriate authorised regulator. Most of the law is found in the Legal Services Act 2007. To summarise – and it is only a summary as this is a complex subject:
Barristers' wigs: traditionally
made of horsehair
Barristers
Are generally speaking granted rights of audience in all UK courts. So they are easy.
Solicitors
Enjoy rights of audience in the county courts as standard. To exercise a right of audience any higher than this – and indeed all the way up to the UK Supreme Court – a solicitor needs to obtain a Higher Courts (Civil Advocacy) Qualification from the Solicitors’ Regulations Authority (SRA) and by doing so become a Solicitor Advocate. Nowadays this can be obtained by passing an assessment, although there have been other schemes in the past (this Kat picked his up by preparing a lengthy portfolio of observed advocacy and then by doing some – which is no longer required).
Legal Executives
A Legal Executive requires a Civil Proceedings Certificate to exercise rights of audience in the County Courts and to become a Chartered Legal Executive Advocate. No higher rights are available.
Without the certificate, a Legal Executive has very limited rights of audience under the County Court (Rights of Audience) Direction 1978 to conduct certain unopposed applications in the County Courts and an application for judgment by consent. See here.
Patent and Trade Mark Attorneys
Patent and Trade Mark Attorneys require special qualifications before they benefit from rights of audience. There are now three levels of qualification, with a new regime having been introduced relatively recently. Every attorney registered prior to 31 December 2012 is deemed to have been granted the first one.
1) Intellectual Property Litigation Certificates
To quote IPReg, “These certificates confer basic rights to conduct appeals in the High Court from decisions of the UK IPO or the Appointed Person, to seek judicial review of such decisions in the High Court, and to conduct litigation and be heard in the [IPEC] or the County Court in defined cases.”
Attorneys qualifying post 31 December 2012 have to complete a Basic Litigation Skills Course to obtain this certificate.
2) Higher Courts Litigation Certificates
To quote IPReg again, “These certificates confer broader litigation rights compared to those listed above, including extensive rights of audience in the [IPEC], and rights to conduct some litigation and appeals in the High Court, Court of Appeal and Supreme Court.”
See 2.2(b) of the IPReg Regulations for the detail.
Attorneys with old style Patent Attorney Litigation certificates and Trade Mark Advocate certificates were passported over to these when they came in. New attorneys need to complete an Advanced Litigation Skills Course to obtain one.
3) Higher Courts Advocacy Certificates
In IPReg’s words: “These certificates confer full rights of audience in the High Court, Court of Appeal and the Supreme Court in any proceedings which may be conducted by an attorney holding a Higher Courts Litigation Certificate.”
See 2.2(c) of the IPReg Regulations for the detail.
The gavel: not used at all in the English
 courts, despite popular misconceptions
Unsurprisingly, and as the IPReg Regulations detail, attorney’s rights of audience (and to conduct litigation) are generally limited to intellectual property disputes. This may surprise some who might think a “trade mark” or “patent” attorney would only operate in those fields, but other areas of intellectual property appear to be in their remit under the new regime. The real question comes where other issues of law – let’s say breach of confidence or breach of contract – come into play.
The problem of IPEC
IPReg amended the IPReg Regulations to change references from the PCC to the IPEC in September 2013, ready for the arrival of the IPEC on 1 October 2013. No problems there.
The SRA on the other hand did not, announcing instead on 8 January 2014 that it would not hold a solicitor lacking higher rights appearing in the IPEC to be in breach of its higher rights regulations. It says it will amend those regulations “as soon as possible” to remove the requirement for a solicitor to hold those higher rights to exercise a right of audience in the IPEC. On the same day the Law Society claimed credit for an announcement by the Chancellor of the High Court that judges will permit solicitors to appear in the IPEC as before when it was the PCC (an announcement I can find no record of on the Internet).
Barristers will no doubt have better things to do (like conditioning their expensive horse hair wigs) than worry about these sorts of administrative dramas.
The discretion of the English courts
The courts retain discretion, in a particular case, to permit a person a right of audience notwithstanding their particular (or lack of) qualifications. Justification is required on a case by case basis and the granting of a blanket right is not appropriate. In my experience as a Deputy District Judge in the County Court, practicalities and time constraints often persuade judges to allow a litigant’s friend or acquaintance to speak for them, usually where the litigant has a poor grasp of English or is simply less articulate. Higher courts may be less generous.
What about the UK Intellectual Property Office (UKIPO)?
The UKIPO is rather relaxed about all this. Its Hearings Department told my colleague James Fox that parties can appear themselves; can appoint: a trade mark or patent attorney, a solicitor or a barrister to appear on their behalf; or, if they want to, anyone – there is no requirement for a representative to be legally qualified. Although it is probably advisable to select someone that has some idea what they are talking about!
What about OHIM, the EPO, the Court of First Instance and the Court of Justice of the European Union and so on?
I’m afraid this takes us outside the UK and so outside the scope of this post, where everything gets more complex (and more controversial). Answers in the comments below if you wish to further the discussion…
A brief conclusion
Rights of audience is an area in which technical regulations rule (as I have found to my distress in researching this post) while political considerations pervade. The traditional divide in the UK is that solicitors prepare a case and a barrister, wigged and gowned, stands up in court and argues it. The position in the UK is far from that nowadays, particularly in IP. Legal practices have converged in some ways, with solicitors’ firms employing attorneys and attorney firms employing solicitors. Attorneys, who some years back might always have referred a dispute to their favourite solicitor, are now empowered to take it on themselves, blurring the lines between one profession and the next. Whether this is a good or a bad thing is a question this Kat prefers not to answer… (Merpel adds: can’t we all get along?)

7 comments:

Barbara Cookson said...

The way to obtain a Higher Courts Advocacy Certificate for a patent or trade mark agent is exactly the same as for a solicitor and IPREG has recognised the same assessment process. Some certificates have already been issued and the assessment was not an IP based one.
IPREG rather than the SRA also regulates a growing bunch of solicitors who practice in IP

Anonymous said...

So where does this leave UK patent attorneys in terms of acting before before the UPC? Will an IPLC-qualified or grandfathered pre-2013 attorney be considered a lawyer with rights to litigate in a division of the High Court in defined cases, and thus acquire rights of audience in the UPC? Or will the HCLC/HCAC be required? The Rules of Procedure are wide open on this point.

Robert Hurst said...

According to Para 15.6 of the Chancery Guide, Solicitors have automatic rights of audience (without the need for a Higher Courts Advocacy Certificate) in the High Court in certain interlocutory applications (such as those relating to summary judgment and case management). Those rights would presumably also apply in the IPEC.

The IPuffin said...

The position at the CFI and CJEU is not clear. At present patent and trade mark attorneys are not classified as "lawyers". There were various reasons given, most of which are dealt with by IPREG in the guidelines which apply to those with the Higher Courts Advocacy Certificate.

It is possible to argue that those with the Advocacy Certificate classify as lawyers. It is subject to the CJEU looking at it again and there is the curious issue that such practitioners may then classify as "legal practitioners" for the purposes of OHIM such that they could not then use the special titles given to them by OHIM

Anonymous said...

As I understood it one of the reasons the CFI gave for patent/trade mark attorneys being ineligible is that they cant represent in ALL national courts only those in the UK because they aren't listed in the establishment directive http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:1998:077:0036:0043:EN:PDF

That reasoning can't apply to the UPC because Art 48 (1) explicitly refers to A national court not ALL national courts. In addition it would be odd to infer an implicit reference to an EU directive for the definition where none is mentioned given that the UPCA has many explicit references to EU directives.

If a national definition of lawyer is applied for 48 (1) it should be clear that post Legal Services Act 2007 the UK registered patent attorneys are "lawyers" (the LSB, IPreg and the LS Act all refer to them as such) and that any with rights to represent a court should be able to do so at the UPC. I agree though that Rules of Procedure should make this clear whilst the last draft made it less so.

The IPuffin said...

from Case T- 14/04 :

9
The Court of First Instance finds that it is clear from Article 19 of the Statute of the Court of Justice that only a lawyer authorised to practice before a court of a Member State or of another State which is a party to the EEA Agreement may represent or assist parties other than the States and institutions referred to in the first and second paragraphs of that article (order in Case T-37/98 FTA and Others v Council [2000] ECR II-373, paragraph 20). That is an essential procedural requirement, which, if not observed, will lead to the action being inadmissible.



10
That requirement is based in the fact that a lawyer is considered to be a person who collaborates in the administration of justice, and who is required to provide, in full independence and in the overriding interests of the judicial system, such legal assistance as the client needs. The counterpart of that protection lies in the rules of professional discipline which are laid down and enforced in the general interest by institutions endowed with the requisite powers for that purpose. Such a conception reflects the legal traditions common to the Member States and is also to be found in the legal order of the Community (see, by way of analogy, Case 155/79 AM & S v Commission [1982] ECR 1575, paragraph 24).



11
Plainly, patent and trade mark agents are not necessarily lawyers. Although Mr Pluckrose is entitled to represent parties in certain actions before the courts and tribunals of the United Kingdom, it remains the case that he is not a lawyer. As it is clear from Article 19 of the Statute of the Court of Justice that non-privileged parties must be represented before the Community Courts by a lawyer (see paragraph 6 above), it must be held that Mr Pluckrose is not authorised to represent the applicant before the Court of First Instance.



12
Furthermore, when an exception to that requirement is permitted, it is expressly laid down by the Statute. Thus, under the seventh paragraph of Article 19 of the Statute of the Court of Justice, university teachers who are nationals of a Member State whose law accords them a right of audience enjoy the same rights before the Court as are accorded to lawyers by that article. Mr Pluckrose has not shown in any way that such an exception applies to him.



13
It follows from the above that this action must be declared to be manifestly inadmissible.



IPREG states that those exercising a right of audience or conduct before the court are subject to the litigator's code:

http://ipreg.org.uk/wp-content/uploads/2012/07/Litigators_Code_website1.pdf


I think that deals with para 10 of the decision

Anonymous said...

Thanks IPpuffin

I think I was thinking of the letter from the registrar in T472/07 http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:62009O0059:EN:HTML

but I cant seem to find a copy of the letter.

T- 14/04 was pre-Legal Services Act and before the LSB was set up as oversight regulator for all types of Lawyer and so as you suggest the arguments today should be very different.

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