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.

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Tuesday, 17 June 2014

Rights of representation before the Unified Patent Court - Get your response in!

This Kat has been following with great interest (and indeed some personal stake) the question of who will be entitled to represent before the Unified Patent Court (see for example previous post here).  Well, he has just noticed that there has been posted for consultation a draft proposal, complete with explanatory memorandum in relation to the  "European Patent Litigation Certificate", which is what someone who is not a "lawyer" will need, in addition to being a European Patent Attorney, to conduct litigation before the UPC.

The requirements for the course are not as onerous as had been feared by some - a minimum of 120 hours - and the curriculum is pretty much as might have been expected as well (see Rule 3).  A written exam and an oral exam are both mandatory according to Rule 4 (how continental - exclaims Merpel - oral examination!).

Merpel thinks this is what
EPA representatives should wear 
An accreditation model is proposed, whereby "accreditation shall be decided upon by the Administrative Committee on the basis of an opinion of the Advisory Committee" of courses run by Universities and "other non-profit educational bodies of higher education".  This appears similar to how IPReg, for example, accredits qualifications, although this Kat notes that IPReg is happy to consider commercial as well as non-profit bodies.

For Chartered Patent Attorneys (wot is wot this mog is), the current proposal is not what had been hoped - either a recognition as "lawyers" or a general grandfathering (i.e. recognition of a pre-existing qualification).  However, it is also more generous than had been feared, since all of the following qualifications are proposed to be grandfathered for a transitional period of three years:

  • Nottingham Law School, course “Intellectual Property Litigation and Advocacy”
  • Queen Mary College London, courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;
  • Brunel University London, course “Intellectual Property Law Postgraduate Certificate”
  • Bournemouth University, course “Intellectual Property Postgraduate Certificate”; 


While this will not cover all CPAs, it will cover a decent proportion of the profession.  If there is to be a compromise, this is not a bad one.  On the other hand, it will adversely affect CPAs who qualified by the JEB examination route.  Also, perhaps strangely, there seems to be no recognition as such of CPAs who hold  a litigator's certificate, who may, but need not, have done the Nottingham course.

As an alternative, a patent attorney who has "represented a party on his own without the assistance of a lawyer admitted to the relevant court in at least three patent infringement actions" can also be grandfathered.  However, the requirement that no lawyer have been involved makes this proposal as currently drafted, at least as regards the UK, seem of rather narrow applicability.

This Kat considers that it is important that potential litigants have a variety of choice in representation from the beginning, as reflected in the Explanatory Memorandum:

Therefore, the recognition of other appropriate qualifications is necessary in order to allow the UPC to start with a sufficient number of qualified EPA representatives. Also, certain robust legal qualifications render acquisition of the Certificate unnecessary.
Moreover, in the initial stages, the UPC system will be new to everyone, so all representatives will be using a system that is unfamiliar to them.

The deadline to provide comments is midnight on Friday 25 July 2014.  Do get in your comments!

IMPORTANT UPDATE FROM CIPA 15:10 on 17 June  17:45 on 18 June
The IPKat is delighted to hear this news from Vicki Salmon:

CIPA and the IPO are holding a joint seminar to discuss this consultation on Tuesday 24 June 2014PLEASE NOTE NEW AMENDED Date of Wednesday 2 July 2014, in CIPA Hall.  Registration from 4.30pm for a 5pm start, with drinks and networking provisionally to start at 6.30pm.  There will be no charge.  Although this has been planned for a while, it could not be advertised until the new draft was published and the consultation open.  So apologies for the short notice.  The event will be recorded and that will be made available afterwards to those who could not attend – sorry no live webinar for this event.

The panel will include Mr Justice Birss and a representative from the IPO.  Vicki Salmon will be chairing.  A form to book places will be made available on the CIPA website soon, and will be emailed to members.

[Merpel understands that the originally proposed date conflicted with some sort of sporting event]

20 comments:

Japser said...

Rule 3, let me have a look and compare with the professional course I had to become a national patent attorney...

- general introduction to law, check.
- basic knowledge of private law, check.
- role of the CJE, check (SPC a don't care for an electrical engineer...)
- enforcement directive, check
- comparatie overview of patent proceedings in other countries, check

And there is something brand new even today's lawyers have no experience with:
- unitary patent protection
- operation of the UPC
- litigation before the UPC

Therefore, my take is that imposing such requirements on EPA's who also have a decent national qualification (UK, Germany, France, Netherlands, ...) should be allowed dispensation for at least a part of the curriculum. As for the brand new matters, why would there be a requirement for EPA's to follow a curriculum to acquire knowledge on this and no requirement at all for lawyers to follow a course to get acquainted with this new matter?

Even more hilarious is that having obtained a bacherlor or master degree in law can provide dispensation for following a course on the details of the UPC and its rules and regulations. Such matter is usually provided only at master levels. And if I were to finalise my bachelor in law today, I would be allowed to practice before the UPC without the knowledge I would have to obtain through the mandatory curriculum.

But, for the person I am, I prefer to add my constructive thinking. Let's cut the curriculum in half and provide dispensation for at least a) through e) and possibly g) for national patent attorneys who had these topics covered in their national curricula.

That would still place a burden upon me to be able to continue litigation practice I have today, but I do realise I cannot win all. And I realise such knowledge is important to serve clients well.

Thinking of that, why would following a curriculum on the UPC and its rules and regulations not be mandatory for lawyers for being allowed to practice before the UPC?

With a bit of luck, I may have the time and patience to write the above down in a more professional way over the week for submission. But I am afraid it may not change a lot.

Anonymous said...

Grandfathering FTW!

Barbara Cookson said...

I have to take issue with Merpel's concern about the oral examination. This seems entirely appropriate if there is to be any oral advocacy in the UPC and although much of it will be written we do seem to envisage hearings so yes oral examination is extremely desirable.

as to whether any further interventions are desirable, I have my doubts. CIPA did not support our proposal and Judge Birss thinks we are apathetic. Sometimes there are arguments that are not worth running. Fortunately, I am a solicitor and provided I am prepared to resist the slings and arrows of "Japser" and his like, I can exercise my right of representation before the UPC on that basis.

Anonymous said...

Are Patent Attorneys not lawyers?

They are listed under 'Other Lawyers' in the Legal Services Act 2007...

Anonymous said...

What about grandfathering the (now defunct) Manchester University Certificate in Intellectual Property???

H.Springorum said...

There are so called ,basic legal training courses' for patent attorney candidates such as Hagen I, the French basic CEIPI program as well as Qeen Mary College basic training that are definetely not appropriate to qualify Patent Attorneys for litigation before the UPC. There is no legal basis in Art. 48 (2) UPC-A to install such a transitional regime without an appropriate qualification. So the transitional regime has to be restricted to such programs that will lead to an appropriate litigation qualification like Nottingham, Oxford, Hagen II and the CEIPI litigation course. European academics shall file an opinion on this matter to the preparatory comitee!

Anonymous said...

To Anonymous at 10:09:

UK Registered Patent Attorneys are indeed "lawyers" under the Legal Services Act but not for the purposes of the UPC.

The 16th draft of the UPC Rules of Procedure qualifies the term "lawyer" with reference to EU Directive 98/5/EC and defines the term for the UK as Advocate/Barrister/Solicitor only.

Philip Harris said...

Unfortunately, Patent Attorneys are recognised as lawyers under the Legal Services Act but not within EU legislation (the CJEU, for example, insists that only solicitors and barristers qualify from the UK). Which prompts me to ask whether the new Certificate will also give rights for Patent Attorneys to appear in referrals from the UPC to the CJEU, which only allows "lawyers" to appear before it.

Anonymous said...

Patent attorneys are lawyers. However the requirement here is not simply to be a lawyer, but to have a bachelor or masters degree in law.

Anonymous said...

Why grandfathering for courses designed to substitute foundation examinations, but not for the foundation examinations themselves? Route to (effective) full qualification without mandatory 'attendance' learning should be maintained.

H.Springorum said...

@Philip Harris:
Of course, a patent attorney acting as a representative on behalf of a party before the UnifiedPatentCourt is entitled to act as a representative in an referral to the CJEU originating in the UnifiedPatentCourt because representations in proceedings acc. to Art. 267 TFEU are subject to Art. 97 par. 3 of the Rules of Procedure of CJEU and not Art. 19 of the Statute of the CJEU following the pinciple that ,lex specialis derogat lex generalis'. Art. 97 para. 3 of the Rules of Procedure of the CJEU reads: "3. As regards the representation and attendance of the parties to the main proceedings, the Court shall take account of the rules of procedure in force before the court or tribunal which made the reference. In the event of any doubt as to whether a person may under national law represent a party to the main proceedings, the Court may obtain information from the referring court or tribunal on the rules of procedure applicable."

Phil Harris said...

Now that's interesting. So that means we have the odd situation that a UK TM Attorney could appear on a referral from the UK courts - but not on appeal from OHIM?

Harald Springorum said...

Yes, indeed!

Robert Hurst said...

Why does the German language version give the right of audience to "Patentanwaelte"?

Darren Smyth said...

To Robert - the German version of what? The Agreement does not:

http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:C:2013:175:0001:0040:DE:PDF

What are you looking at?

Anonymous said...

I'm not sure that the rationale for an oral exam is connected to the likelihood that the UPC proceedings will involve oral advocacy.

Oral advocacy is already an essential component of an EPA's skillset, especially for the opposition practice which is the focus of the C paper, and yet prospective EPAs are not examined viva voce during the EQEs.

While I can't argue with points such as that viva voce examination tests a candidate's ability to think on his feet and to probe more comprehensively the areas of knowledge and lack thereof than a written paper, most institutions have dispensed with the practice since they are simply not cost-effective to administer, if done properly. A useful viva of a comprehensive syllabus requires three assessors for fairness and moderation purposes and takes between one and two hours to administer. Sucha viva can only handle one candidate at a time. The effort in examining viva voce even ten students is immense. Vivas have their place where there is doubt about a candidate, or a need to scrutinise borderline pass/fails, but otherwise are to be discouraged as a waste of an institution's resources.

I therefore share Merpel's surprise that this aspect is set in stone, rather than left to the discretion of the certifying institution.

Anonymous said...

In reply to Barbara Cookson:

I'm not sure which proposal CIPA didn't support?

However, the difference between the present grandfathering proposals and the previous draft seems to be that we now have a number of UK courses on the list. Previously there were just the CEIPI and Hagen courses, which would have favoured French and German EPAs at the expense of the Brits.

I'm pretty sure that change comes about because of lobbying from CIPA. See the column by CIPA's CEO Lee Davies in the April CIPA Journal (and to a lesser extent in May).

Whether the mix of qualifications proposed is sensible is another question - whichever country they come from. This is something which one might debate at the CIPA/IPO seminar next Tuesday.

E.g. why should a British EPA be grandfathered for passing the basic QM Certificate, but not for passing the equivalent JEB foundation papers? Why is the JEB P6 Finals paper on Infringement and Validity not given any weight? P6 is clearly directed at issues that will be relevant in the UPC, so would add something useful to the EQE qualification that an EPA has anyway.

Anonymous said...

Note to IPKat - you should make that information about the CIPA discussion panel with Birss J more public. Many IPKat readers will only be looking at news that comes in the e-mail update when a new post is added, so they may miss this information.

Granted, the IPKat can write what it likes, and it does not have a "public service" obligation. However, I would suggest that the IPKat is held in such high respect by the IP Community that the position is almost that if something (in the world of IP) isn't written on IPKat then it isn't true.

Anonymous said...

Robert, I think the reasoning is that the German version of the agreement refers simply to "Anwalt" rather than "Rechtsanwalt" and therefore there is an argument that a "Patentanwalt" can also represent. Since all three languages are equally valid, this would mean that a CPA with a right of audience before a national court, ie a litigation certificate can also represent. The rules of procecure cannot override the agreement.

Barbara Cookson said...

The CIPA lobbying has resulted in some foundation level courses being added to the list in Rule 12(a). This means that recently qualified patent agents have rights of audience whereas grandfathers even those who have done a higher rights oral assessment of several hours duration involving considerable resources do not. I was hoping that CIPA would support the cause of its members who are ACTIVE in patent litigation over the apathetic (Birss' word not mine).

Its also interesting to see that the Law Society Gazette carries an article which does not lead me to have much hope that the Bar and Law Society will support CIPA.
My view is that the EPLC syllabus is as good as we would expect.
Rule 11 should be amended to allow those who have rights of audience in a higher court of a member state to apply. The added courses in Rule 12 should go as they do not cover enough litigation content. Sorry but if we want credibility with other lawyers we need Law Society support. Rule 12(b) may well help the Swedes but I doubt that there is any UK candidate close to having achieved that.
The problem is without fee indications we don't know whether the UPC will ever hear cases other than large pharma and telecoms. It may well be that despite the political hype national courts like IPEC are the ones that will deal with these cases and therefore CIPA needs to concentrate on ensuring that its members provide those patentees affordable access to justice there. Many firms have turned their back on providing these services.

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