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.

Wednesday, 22 January 2014

Rights of UK patent attorneys to Practise before the Unified Patent Court - CIPA/IPO Open Meeting

To his great pleasure, it fell to this moggy yesterday to attend the meeting organised by the IPO and CIPA at CIPA Hall to discuss the rights of representation by patent attorneys at the Unified Patent Court.

There now follows a digression of comparative zoology. The IPKat is not an Octopussy, and therefore he is able to contribute to the debate and tweet, or take notes, but cannot do both.  Since he did the former (@EIP_Elements), he emerged with no further written record.  He is also not an Elephant, and therefore suffers from imperfect recollection. Moreover, unlike a Chameleon, when he is sitting at the front of the room, he cannot see behind him, and therefore he was not always aware of who was speaking at any given time. For that reason, in the report that follows, he will not attempt to attribute specific comments to specific people.

Purely by chance, this outcome of necessity probably serves an admirable purpose of encouraging open speech, because it may well be that some of the attendees were expressing provisional opinions that they might not wish to see attributed to them with the finality of the written word.

The advertised lineup was as follows.

Chairman:
Roger Burt, President of CIPA
Speakers:
Neil Feinson, Director of International Policy, IPO.
Mr Justice Birss
Chris Mercer, Carpmaels & Ransford LLP
Vicky Salmon, IP Asset LLP


Roger Burt and Neil Feinson gave suitably general opening remarks.  Vicky Salmon opened the topic of Rights of Representation, while Chris Mercer opened the topic of Rule 286 of the Rules of Procedure (concerning how right to practise before the UPC will be evidenced).  Each of these opening presentations was followed by a period of open debate.  Mr Justice Birss then summarised what he had heard and gave some thoughts of his own.

Did someone say
"Sir Colin"?
If this Kat has understood correctly, Mr Justice Birss is the UK representative on the advisory committee that will advise the Human resources and training Working Group (led Mr. Oliver Varhelyi – Hungary) which is the part of the Preparatory Committee that is responsible for representation, as well as for the selection and training of UPC judges (see the 18 December 2013 news here, which outlines the structure.)

The upshot of the debate seems to this Kat to come down to the following.

Firstly, we need to concentrate on the wording of the UPC Agreement, not the Rules of Procedure, which are currently a bit of a mess around the subject of representation (and proof of entitlement to represent) and are making a complicated situation even more difficult.  The current draft of the Rules of Procedure are not the final version and can and presumably will be changed.  The Agreement is now negotiated and therefore not negotiable.  It therefore all comes down to Article 48 of the Agreement, which states at the important part:

"(1) Parties shall be represented by lawyers authorised to practise before a court of a Contracting Member State.
(2) Parties may alternatively be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate. "

So, to represent clients before the UPC, a UK patent attorney (RPA) who is also an EPA (which is what most of the UK profession in practice is) must EITHER be considered a "lawyer" under (1), or must "have appropriate qualifications" under (2).

Disregarding complexities of interpretation brought about by the 15th draft of the Rules of Procedure, this Kat thought that it was right, proper, and (more importantly) likely that RPAs would be considered as lawyers under (1), since the Legal Services Act 2007 says so.  So it came as a bit of a surprise when it turned out that many in the room considered otherwise.  However, he cannot dispute the validity of the contrary logic, that, UK legislation notwithstanding, the historic position before the Court of Justice is that for the UK "lawyer" means "solicitor or barrister".

So that brings us to (2).  This Kat was equally surprised (because the thought had not occurred to him before) to hear for the first time the proposal that if RPA status did not confer on the holder the status of "lawyer", it might nevertheless count as "appropriate qualifications" under (2).  The reasoning being that this is what gives the person the right to practice before a UK court (the IPEC).

It is clear that anything that UK patent attorneys wish to rely on in order to have the right to represent at the UPC cannot come by reliance on any aspect of their competence or experience as an EPA, because Art 48(2) makes it clear that being an EPA as such is not sufficient.

Another possibility that was discussed is that even if an RPA did not as such have "appropriate qualifications", such a person would start from a different position than a person who was only an EPA, and therefore it could be argued that a more streamlined training could count as equivalent to "a European Patent Litigation Certificate", so that a rather short training course might suffice.  In this regard, this Kat is very concerned that apparently not only does the "European Patent Litigation Certificate" not exist, there is currently no clear mechanism for any future course to be accredited as being it.

There was discussion concerning whether right to practice before the UPC should be a centrally governed matter, or whether the Court should rely on individual member states to certify according to the national norms.  It is not clear that the latter is actually possible even if desirable.  There was also disagreement as to whether the national route would result in the bar being set higher, or lower.

Of course some RPAs have higher litigation rights - apparently about 70 have the Higher Courts Litigation Certificate and 6 have the Higher Courts Advocacy Certificate (of whom apparently no fewer than 4 were in the room).  Naturally those people felt that even if ordinary RPAs were not automatically entitled to represent, then either under (1) or (2), or by some kind of grandfathering provision, they should be considered to have the representation right.  This Kat entirely agrees with this position, but it does not address the issue of the overwhelming majority of the UK profession.

An interesting point that was raised is that a Register will be maintained under (2) but not under (1), and at least one person considered that it was an advantage to have one's right to practice listed on a consultable register.

Another point raised that this Kat had not thought of before - will practising before the UPC be covered by existing national regulatory structures, or will amendment of regulatory provisions be necessary to ensure that persons are subject to regulation when they practise before the UPC as they are when they practise nationally?  Do all countries even regulate their lawyers at the moment?

Like so many aspects of the Unitary Patent and UPC, small details make a huge difference, and only time will reveal more.  Apparently the Working Group is preoccupied with the unexpectedly huge number of expressions of interest in becoming a UPC judge, and so the issue of representation is not as high a priority as clearly it should be.  The IPKat hopes for some progress soon.  At the very least, it is essential that everyone who will be able to represent can do so from the start, since at the beginning the process will be new for everyone.  If patent attorneys have to wait until some "European Patent Litigation Certificate" comes into being, then clients, and the whole system, will suffer.


24 comments:

HSP said...

Please be aware that not the sub-comittee ,human ressources & training' is responsible for representation matters, but the comittee ,legal framework'!

Anonymous said...

My guess is that lawyer will be interpreted in accordance with article 1(2) of Directive 98/5/EC on the freedom of establishment of lawyers. Thus covering barristers, solicitors and Scottish advocates.

MaxDrei said...

I'm not trying to keep up with this topic so this thought might be nonsense. But here goes anyway.

Start from the idea that Art 48 of the UPC was written with the German legal professions in mind. German national patent attorneys represent clients at the German Federal Patents Court. No attorney at law needed.

Now, suppose that one "appropriate qualification" under Art 48, UPC would be qualification as a German national patent attorney.

Clearly, qualifying in Germany or the UK as a national patent attorney opens up rights of audience in local courts not enjoyed by a mere European Patent Attorney.

If mere qualification as a German national patent attorney is enough to constitute an "appropriate" qualification, why not mere qualification as a British national patent attorney?

Darren Smyth said...

In regard to the comment of HSP at 18:52, I wonder whether someone who was present at the meeting could confirm whether my recollection is accurate or not.

Darren Smyth said...

In response to MaxDrei - you are articulating the argument from the German standpoint that was set out last night from the UK position, replacing "German Federal Patents Court" with "Intellectual Property Enterprise Court". What I don't know is whether this argument actually is being made by German Patentanwalte.

Anonymous said...

How narrowminded of the drafters. Just as the LSA and concomitant regulatory structure moves the British legal system into a landscape of conferred rights to practice under appropriate regulation with respect to particular regulated activities (including rights of audience), rather than a landscape predicated on historic titles and privileges, and just as the ancient demarcation between the solicitors, the bar, and other representative and advocate professions is weakened in the name of access to justice, the UPC aims to base its rights of representation on just such historic titles and demarcations. Hardly forward-thinking.

HSP said...

Wonder why, wonder how ...

Mark Richardson said...

Darren

My notes record that Article 48 falls to the HR and training group led by Mr Varhelyi and that there will be an advisory panel setting up a list of EPAs who will be eligible to appear before the UPC.

Mr Justice Birss is the UK representative.

Regards

Mark

Anonymous said...

@Darren I believe 'HR & Training' are responsible for the list of EPAs under Art 48(2), the Litigation Certificate and deciding appropriate qualifications, but 'Legal Framework' are responsible for rules of procedure including Rule 286.

@anonymous- I don't see the justification for reference to Directive 98/5/EC. It only defines lawyer for the purpose of the directive, gives no general definition, and isn't mentioned in the UPCA (whereas many other directives are). Further it would seem to make the requirement of 48(1) that lawyers are "authorised to practice before a court of a Contracting Member State" redundant. All professionals listed in 98/5/EC (including Spainish ) are authorised (even if in conjunction with a local lawyer) to practice before some courts of all EU countries including all UPC contracting states. Excluding US attorneys because they aren't "authorised to practice before a court of a Contracting Member State" makes sense but excluding them because US Attorneys aren't "lawyers" is a nonsense.

Anonymous said...

Article 48(4) states that:

"(4) Representatives of the parties may be assisted by patent attorneys ...."

So it would be reasonable to assume that a distinction is being made between lawyers, EPAs and other patent attorneys (eg. UK patent attorneys). It seems that the battle to show that RPAs are lawyers under Art. 48(1) is lost. Sir Colin certainly thought so at the Open Meeting.

I also don’t think we can disregard Rule 286, since its development is further evidence of the resistance to including patent attorneys in the “lawyer” category.

It is clearly vital that RPAs are able to represent their clients in the UPC in future, but as long as we achieve this, it doesn’t matter how it is achieved. Ultimately, since almost all of us are also EPAs, then if we need to take a European Patent Litigation Certificate (or equivalent), I don’t see the problem, with the big proviso that that Certificate must be in place well before the Court opens, so that those who wish to qualify to represent before the UPC can do so from the start.

Mark Saunders said...

Does the notification of an opt out under Article 83(3) UPC require a right of representation under Article 48 UPC?

Mr Justice Birss recommended that we provide reasons to explain why it is urgent to resolve issues surrounding representation.

It is urgent that we understand the requirements for making use of the opt out before the UPC Agreement enters force.

Aaron said...

In exercising the right of conduct and representation before the UK courts, an attorney must have the ability to point to its right - ie. a certificate or being on the list.

As such, it is straightforward for the 70/76 attorneys with higher rights to prove this - they provide their certificates.

For the others.. well it's unfortunate but it is no different from the position with the CFI and ECJ for current practitioners, or their ability to conduct litigation or advocacy in the UK.

I agree that hanging on to historic titles is problematic, particularly as it potentially reduces the rights of UK practitioners. There is a case for intervention by members of the government.

MaxDrei said...

I have seen that "assist" language before somewhere.

I wrote above that a patent attorney all by him/herself can represent a client at the Federal Patent Court in Munich. That's where validity attacks are litigated.

However, at District Courts in Germany, where infringement cases are tried, a party's patent attorney can only "assist" the attorney at law representing that party in the action. Guess what? To the "assisting" patent attorney will be delegated all issues of substantive patent law. Often there isn't much real work for the attorney at law to do, to earn his attractive fee. How's that for a scheme that would appeal to lawyers?

How much clout in the corridors do Germany's lawyers have, when it comes to writing the UPC Rules of Play? As for those on the offshore islands, with their strange and alien (English) legal system, does anybody on the mainland pay much attention any more, to what they want the mainland to do?

Anonymous said...

Re Aaron @ 13:17:00 GMT

Presumably the other RPA without Higher rights certificates could point to their IPREG Intellectual Property Litigation Certificates entitling them to appeal before the IPEC and on appeal from the Patent Office.

HSP said...

In general it is not true what MaxDrei said: Look at § 4 (3) German Patentanwaltsordnung. Patent attorneys are allowed to represent their clients - of course in IP matters, only - in all courts except, if there is a monopoly of Rechtsanwälte see § 78 German Civil Procedure Act. There are a lot of proceedings - i.e before the Amtgericht (i.e. in copyright cases relating to software), the Finanzgericht..., and last, but not least before the Landgericht - where no representation monopoly of the Rechtsanwälte exist (i.e. Request for preliminary injunctions, seizure proceeding, ....). There s no right ,to assist'. There is in general a right of reresentation in court that is limited to a right of audience and not assistance in certain cases before certain courts.

MaxDrei said...

Nice to hear from HSP, who clearly knows more than I do about rights of audience in the LG, the OLG and the BGH in Karlsruhe But I do note that his remark that what Max writes is "not true" is prefaced by the words "In general".

I'm not so much concerned with in general as with the particular case of who can ask the court for a permanent final injunction to restrain infringement of the patent in suit. Can HSP clarify for that particular case?

Anonymous said...

Further on fro HSP's interesting contribution, having looked at the documents he referred, it would appear that these more relate to a right of audience rather than a right of representatation per se, i.e. without an attorney at law (Rechtsanwalt), making comparison with the Federal Patent Court where the patent attorney has the right of sole representaion which extends up to the Bundesgerichthof on appeal (with the same rules applying to a UK patent attorney).

MaxDrei said...

I'm most grateful to that Anonymous at 20:43 for distinguishing between the concepts of representation and audience. His intervention suggests to me that I am not wrong, that German patent attorneys can represent clients in validity cases up to the supreme court in Karlsruhe but cannot represent clients in infringement cases brought in the district courts (even though they typically do most of the written and oral pleadings in those actions).

HSP said...

Your definetly wrong because § 4 (3) says that the patent attorney can act as a ,Bevollmächtigter' (representative) and not as a ,Beistand' (assistant). So, § 4 (3) Patentanwaltsordung founds a full right of representation in court, but of course limited to matters of IP and as far as the ,Rechtsanwalt' has no legal monopoly (see i.e. § 78 ZPO). This is confirmed by the ,travaux préparatoires' of the Bundestag and all judicial commentaries as known by me.

HSP said...

One more indication to Darren Smyth: Of course the ,legal framework' sub- comittee of the preparatory comittee is responsible for represantation matters. The basis therefore is European Council Document no. 15819/13 of Nov. 18th 2013 (2.3 2nd para.) . So, this responsibility is meanwhile publicly available, too.

MaxDrei said...

https://www.cohausz-florack.de/fileadmin/user_upload/publications/patents_in_europe_2012_2013_germany.pdf

Readers, the above Link takes you to the book "Patents in Europe 2013/14" published by IAM/EPO/Cohausz. Find the Section on Germany and in it Question 10 "Who can represent". Find in the Answer the words "must" and "attorney at law".

Notwithstanding what he writes above, perhaps HSP can clarify what Cohausz is saying in this book? Why should a prominent German patent attorney firm be telling readers that they "must" use a RA?

Anonymous said...

HSP, if you are based in Germany, would you like to comment on the interpretation of A48(1) from a German point of view and whether the refernce therein to "Anwalt" includes patent attorneys with a right of audience in a national court within its scope?

MaxDrei said...

And would HSP also care to comment further on the PA_Ordnung's para 4(3) he cites above, that tells the PA profession that a PA "can" act in court as representative. I'm not disagreeing with that. Quite the contrary. At the outset, I wrote that a PA routinely does indeed that very thing, from the BPatG up to the BGH, in patent nullity suits.

May I ask, is 4(3) of the PAO HSP's only basis for asserting that a PA can represent alone, without an RA (attorney at law) in the case of patent infringement suits, through the LG and OLG, all the way to the BGH? To me, 4(3) leaves HSP way short of refuting the exact opposite, as written in the IAM/EPO/Cohausz Guide I reference above.

This is getting silly. Why won't HSP come clean? Anybody else out there? It ought to be simple enough to nail this point. Or must I ask around the office on Monday, and then post here again?

Anonymous said...

Why was this issue not considered with this level of scrutiny BEFORE the UPC was finalised and agreed? Better engagement in European processes by UK vested interests would not go amiss!

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