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Wednesday, 9 September 2015

Qualifications for patent attorneys to represent before the UPC have been approved: many to qualify

Thanks to a very timely email from CIPA (the UK Chartered Institute of Patent Attorneys) the IPKat has been alerted to the fact that a further draft of  the Rules relating to the European Patent Litigation Certificate has been published on the website of the Preparatory Committee, together with the news that this draft was agreed by the Preparatory Committee at its meeting on 3 September 2015.  There is also an Explanatory Memorandum.

The European Patent Litigation Certificate is the qualification that a European Patent Attorney will be able to obtain in order to have the same rights to conduct litigation at the Unified Patent Court (UPC) as a legal practitioner in a member state which is a party to the Unified Patent Court Agreement (according to Article 48 of that Agreement).  This qualification does not yet exist - institutions will be able to apply to the Administrative Committee of the UPC for accreditation of appropriate courses.  Most of the Rules relate to this accreditation procedure, and have not, as far as this Kat can see, significantly changed from the previous draft (see IPKat post here), and the prescribed substantive content for the course has not altered (Rule 3).  Some features that remain in the Rules are:
  • Only "Universities and other non-profit educational bodies of higher or professional education established in a Member State of the European Union", and not commercial providers, will be able to offer the course (Rule 6).
  • The minimum duration of the Course remains at 120 hours of lectures and practical training (Rule 4).
  • Examination must include both a written and oral examination (Rule 4).
Also unchanged is that a European patent attorney with a degree in law, or an equivalent state exam in law, need not take the Certificate in order to be recognised as able to represent before the UPC (Rule 11.  This is a permanent arrangement, not a transitional provision.

However, it is the transitional provisions that will be of most interest to patent attorneys.  For a period of 1 year after the entry into force of the UPC Agreement, a number of national qualifications will also be recognised as conferring the right to represent before the UPC.  Since readers who are patent attorneys will doubtless be anxious as to whether they hold a suitable qualification, the IPKat takes the liberty of copying the list at the end of this post.  For other readers, he will simply note that most of the courses listed in the previous draft remain, and quite a few further ones have been added.  (Deleted from the list are the “Intellectual Property Postgraduate Certificate” from Brunel University and Bournemouth University. )  It seems that quite a large proportion of currently qualified patent attorneys will be grandfathered in this manner.  Rule 16 specifies that registration under the transitional provisions will be permanent, other than under some circumstances such as ceasing to be a European Patent Attorney.

The alternative transitional provision granting representation rights to a European Patent Attorney who has "represented a party on his own without the assistance of a lawyer admitted to the relevant court or having acted as a judge in at least three patent infringement actions" within the preceding 5 years seems to be much less applicable in practice.  At least in the UK, most litigation is undertaken in teams, and for a patent attorney to have conducted litigation in which a solicitor or barrister was never involved seems unlikely.  This provision has been amended to add the possibility of  "having acted as a judge", but the rest is unaltered from the earlier draft, and the Explanatory Memorandum notes:
In this respect, experience acquired in assisting a representative or in other actions such as revocation of patents or appeals against decisions of patent offices is not sufficient to ensure that an EPA has developed a personal and adequate knowledge of case management in all areas of competence of the UPC.
This Kat is not neutral in the matter of who will have the right to represent before the UPC, as a European Patent Attorney with other qualifications which might or might not have been recognised depending on how the previous draft was revised.  He is disappointed that the transitional provision relating to prior litigation experience has not really been revisited properly, but welcomes the consolidation of the list of courses that are recognised in the grandfathering provisions.

Qualifications that will give rights of representation to EPAs in the transitional period.
(i) Centre d’Études Internationales de la Propriété Intellectuelle, courses leading to the Diploma on Patent litigation in Europe or to the Diploma of international studies in industrial property (specialized in patents);
(ii) FernUniversität in Hagen, course “Law for Patent Attorneys” and its predecessor, the course “Kandidatenkurs Fischbachau”;
(iii) Humboldt-Universität zu Berlin, course “Zusatzstudium Gewerblicher Rechtsschutz“;
(iv) Nottingham Law School, course “Intellectual Property Litigation and Advocacy”;
(v) Queen Mary University of London, courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;
(vi) Intellectual Property Regulation Board, “Intellectual Property Litigation Certificate”;
(vii) Intellectual Property Regulation Board, “Higher Courts Litigation Certificate”;
(viii) Intellectual Property Regulation Board, “Higher Courts Advocacy Certificate”;
(ix) Stichting Beroepsopleiding Octrooigemachtigden, course “Beroepsopleiding Octrooigemachtigden”;
(x) Hungarian Intellectual Property Office, course “Advanced Course in Intellectual Property”;
(xi) University of Milano, course “Corso di Perfezionamento in Brevettistica”;
(xii) University of Warsaw, course “Podyplomowe Studium Prawa Własności Przemysłowej”


Anonymous said...

Any idea why the Queen Mary University of London “Certificate in Intellectual Property Law” remains on the list, whilst the equivalent (at least in my mind) Brunel University and Bournemouth University certificates are removed (and the now defunct Manchester University certificate never even made onto the initial list)?

slartibartfast said...

What about Art. 48(1), which allows "lawyers" automatic rights of audience before the UPC? In the UK patent attorneys anyway have rights of audience in the lower courts and are deemed to be "lawyers" by the Legal Services Act 2007. I think German patent attorneys also have the right to represent clients in the German courts. Does Art. 48(1) UPCA provide a workaround, say, for British patent attorneys who are grandfathered into the IPReg IP Litigation Certificate, or who obtain the Certificate *after* the cut-off of the transitional provisions?

oldfart said...

Well done to cipa forgetting such a broad range of qualifications accepted for the transitional provisions even though they are sadly some notable exceptions.

Anonymous said...

Is this saying that if you have completed the Queen Mary University of London “Certificate in Intellectual Property Law” there is no need to do the litigation skills course? That doesn't sound correct.

Anonymous said...

It looks like the grandfather clause is an all-in at least for current FR/GB/DE patent attorneys
This may in fact discredit the few PAs which have litigation experience or a law degree

Anonymous said...

The transitional provisions are definitely a success for patent attorneys across Europe.

In practice it looks as if virtually all EPAs in UK, Germany and France will get in under the grandfathering provisions with a fair share from Italy, Hungary, Poland and the Netherlands.

Looking just at the UK, the inclusion of the various IPReg certificates will mean that UK EPAs who are RPAs and were on the register on 31 December 2012 will be eligible for UPC litigation certificates. This will probably cover about 90% or so of UK EPAs.

For anyone who was not qualified on that date (which will certainly include all current trainees), the rules would certainly seem to give a significant advantage to trainees who attended the QM course over anyone taking the PEB papers or doing the Brunel or Bournemouth course since in practice they only have to pass the EQE to be eligible for a UPC litigation certificate whereas although you can attend an IPReg approved basic litigation course before qualifying as an RPA, being an RPA is part of the qualification for any approved litigation certification. Hence, if you did not go on the QM course you have to qualify as an RPA, pass the EQE and take and pass the IPReg basic litigation course.

Since most trainees do attend the QM course probably almost all UK EPAs will ultimately end up being eligible for a certificate. But it does seem a little unfair on those who attended Brunel and Bournemouth or took the foundation exams in the last few years.

Assuming the court opens its doors sometime in 2017 and the transitional provisions end in 2018 probably none of this will impact anyone’s choice of course going forward since anyone attending the Bournemouth or Brunel courses now probably won’t qualify as an EPA before the cut-off date.

Ron said...

It is (and has always been as afar as I recall) a condition of enrollment for the the EQE that candidates must have a scientific or technical degree (currently specified as a degree with at least 80% technical content). Thus the only EPAs able to benefit from the law degree exemption would appear to be the very small number who have both a technical and a law degree, and those who have only a law degree but were able to benefit from the grandfather clause exemptions that were applicable when their state joined the EPC.

Darren Smyth said...

To the first Anon, I don't know, but as Anon at 18.53 points out, the number of people affected is small, since many of those who did the Brunel and Bournemouth course have other qualifications by which they can benefit from the transitional provisions.

To slartibartfast - the argument that patent attorneys are "lawyers" was considered and rejected by the preparatory committee since in the rules of procedure the definition taken for "lawyer" was the by reference to the criteria for representation before the CJEU, which for England and Wales means solicitors and barristers.

To Anon at 17:10 - this is only to practise before the UPC. IPReg still requires you to do the litigation skills course. If that was the point you are making.

To Ron - I agree that the qualification by reference to law degree will be rarely of use in the UK. It may be relevant in other countries, however.

Anonymous said...

Did the Prep Committee consider the German language version of the Agreement referring to "Anwalt" rather than "Rechtsanwalt" or just the English version?

H. Bosch

MrShine said...

How is it right that the QM course is accepted but the foundation exams (which is the standard it is based by) are not?

Anonymous said...

What really annoys me is the fact that the transitional period in Rule 12 of the EPLC Rules for filing the request for recognition of "other appropriate qualifications" has been shortened without prior notice from three years to one year compared to all previous drafts of the EPLC Rules since January 2014!

If you were a European Patent Attorney and registered for the next available German "Hagen course" right now, starting in February 2016 and taking two years, then you could hardly pass the Hagen exam and register as a grandfather with the UPC within the new one year period, given that the UPC agreement might enter into force in late 2016 or early 2017. (You guessed it: This is exactly the situation I'm in.)

With the formerly envisaged three-year transitional period, which I had been relying on (in "good faith"?) for the last one and a half years, the time schedule would have been much more relaxed!

Anonymous said...

@Anon 9:10

Its unlikely the Prep Committee considered such arguments at all. The arguments submitted in the consultation on the RoP were converted into a summarised digest by two members of the drafting committee (one an English Solicitor and one a Rechtsanwalt). The digest included a recommendation from those two members that the RoP define lawyer by reference to the establishment directive and the digest did not include the substance of the contrary arguments. This digest was then considered by the whole drafting committee and their recommendations send on to the prep committee.

There is certainly an argument that the RoP are ultra vires because the Agreement gives the right to all lawyers who have national right of audience not only to a subset of lawyers.

The establishment directive repeatedly refers to "lawyers covered by this Directive" i.e it implies that it does not cover all lawyers. It only presents a definition of lawyer for the "purposes of this Directive" not for the purposes all European law. The UPCA restricts right of audience to those lawyers who have right of audience in a national court not to those able to work in other member states. Further the UPCA itself references relevant EU directives for definitions (e.g in relation Bolar, interoperabilty, veterinary products etc) but does not reference the establishment directive.

All that said I don't think its an argument worth making before the UPC. The grandfather clause is generous, and long term having the specialist EPLC rather than an exemption will probably be advantageous (how many legal professionals market their exemption from the EQEs to prosecute before the EPO?). Any non-grandfathered attorney that raises this argument at the UPC will probably be perceived as being lazy and trying to find a loophole to avoid taking a by-then-established course. The RoP and precedents on UK attorney rights at the CJEU (even though the predate the legal services act so shouldn't really matter) will probably be sufficient ammunition for judges who wish to stop those that they perceive as lazy.

I am not a number. said...

"What really annoys me is the fact that the transitional period ...... has been shortened without prior notice "

Isn't this announcement 'prior notice'?

Gilman Grundy said...

Hmm . . . the CPE/GDL is 'equivalent' to a LLB AFAIK, so can people who've passed it and the EQEs qualify? This would be a strange outcome if so - I don't think it really qualifies you to do this - although since I have one I would not complain.

Gilman Grundy said...

BTW - it's interesting just how many EU countries do not appear to have qualifying institutes: Belgium, Luxembourg, Portugal, Denmark, Sweden, Finland, Eire, Czech Republic, Slovakia, Slovenia, Croatia, Greece, Romania, Bulgaria, Malta, Austria, all of the Baltics, Cyprus - countries whose population sums to more than 100 million people.

Spain's absence is explicable by their absence from the UPC altogether (but Italy is in, so . . .). I suppose for some of these countries there are nearby countries with institutes that speak their language (e.g., Belgian students may study at Strasbourg), but still . . .

Anonymous said...

Hungarian Intellectual Property Office, seriously? Surely, they joke. Many, many national IPO's have similar courses. In the alternative, could I suggest a University somewhere in Hungary, if Hungary is necessary? Or could I suggest Greece for the good weather and seaside pleasures?

UNGK said...

I'm still a bit surprised that the EQE is not required for the EPLC. And double grandfathering (EQE and Certificate) is possible.

Anonymous said...

I'm confused - CIPA seem to think that the QMUL certificate will NOT give rights of representation before the UPC. The Kat thinks it will. Or am I missing something?

Darren Smyth said...

Dear Anon
Please could you provide link or something to where CIPA "seem to think that the QMUL certificate will NOT give rights of representation before the UPC". If there is a discrepancy, I might be able to explain it.


Anonymous said...

Hi Darren - I am afraid I can't link to it, but on page 4 of the August/September CIPA journal, there is an article regarding representation rights. That doesn't mention anything about the QMUL course, but the wording seems pretty exhaustive to me - maybe I am just worrying too much because I wan't to be sure I have the right qualifications in place!

Darren Smyth said...

Dear Anon
I think that Rule 12 of the currently agreed draft is pretty clear. Actually, I don't think that the CIPA Notice is, or indeed purports to be, exhaustive. It states "In view of the listing of the IPReg certificates, some of the UK Foundation Level courses have been deleted from the list in Rule 12." But it says neither which were deleted nor which were retained - it does not refer to any Foundation level courses at all. But two Queen Mary courses are clearly listed in Rule 12(a)(v). I hope that helps somewhat, but of course we will have to wait and see what rules the Court eventually adopts as well.
Best wishes

Anonymous said...

I am an EPA but I've done none of the listed courses required for grandfathering in (or anything similar thereto for that matter) nor any other relevant qual. It is a shame that there is no EPLC course available to start in the next few months because I would like to start it as soon as possible. To be honest, I think it would be a bit nutty to try to represent with merely e.g. the QMW or Hagen course as your ticket to ride. But maybe you will have no choice...

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