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”