Rules for representation at the UPC

United Kingdom

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

Following a meeting of the Preparatory Committee, draft rules on the European Patent Litigation Certificate and who has rights in the UPC have been published.  These confirm that Patent Attorneys will have the right to conduct litigation, provided they have the required litigation training.  During a transitional period of 1 year registration will also be granted to Patent Attorneys who have completed an approved national course.  This provision appears to cover most nationally qualified Patent Attorneys.

The details of who is entitled to represent parties at the UPC and conduct litigation has been a long-running debate.  Many groups have been lobbying to ensure their profession does not lose out on the opportunity to serve clients in the new court.  The Preparatory Committee have now published draft Rules setting out who will entitled to represent clients at the UPC.

Most attention has been on Patent Attorneys as to whether they are counted as “legal practitioners” and thus have the right to conduct litigation.  Existing litigation rights in this profession vary greatly across Europe, and even within a country.  Training and qualification for representation at the EPO does not cover litigation, but some national qualification routes do.  In some countries, such as the UK, there is a two-tier system with all Patent Attorneys having rights in some Courts (albeit they extremely rarely used), and the ability to study further for rights in the High Court.

As expected, Patent Attorneys will be able to complete an approved course to obtain a “European Patent Litigation Certificate” and then be registered to represent clients in the UPC.  Patent attorneys with a law degree will not be required to take the course.  Such courses do not yet exist, but the draft Rules set out requirements that must be met for a course to be approved:-

  • The course must provide a minimum of 120 hours of lectures and practical training.
  • Courses by commercial providers will not be approved; only educational bodies in member states.
  • Both written and oral examinations are required.

The approved courses will thus be substantial and time consuming, but this seems reasonable since candidates may have no prior general law training, and no training or experience of patent litigation.

The rules also provide a transitional period of 1 year during which certain national courses and qualifications are sufficient for a Patent Attorney to be registered with the UPC.  Prior litigation experience may also qualify a Patent Attorney, but this appears a difficult criteria to meet as it needs litigation to have been conducted by the Patent Attorney on his own without assistance of a lawyer.  Registration must be requested within the transitional period, but will be permanent.

The approved courses are:-

  • 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);
  • FernUniversität in Hagen, course “Law for Patent Attorneys” and its predecessor, the course “Kandidatenkurs Fischbachau”;
  • Humboldt-Universität zu Berlin, course “Zusatzstudium Gewerblicher Rechtsschutz“;
  • Nottingham Law School, course “Intellectual Property Litigation and Advocacy”;
  • Queen Mary University of London, courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;
  • Intellectual Property Regulation Board, “Intellectual Property Litigation Certificate”;
  • Intellectual Property Regulation Board, “Higher Courts Litigation Certificate”;
  • Intellectual Property Regulation Board, “Higher Courts Advocacy Certificate”;
  • Stichting Beroepsopleiding Octrooigemachtigden, course “Beroepsopleiding Octrooigemachtigden”;
  • Hungarian Intellectual Property Office, course “Advanced Course in Intellectual Property”;
  • University of Milano, course “Corso di Perfezionamento in Brevettistica”;
  • University of Warsaw, course “Podyplomowe Studium Prawa Własności Przemysłowej”

UK-qualified patent attorneys will hold the IPREG Intellectual Property Litigation Certificate, either due to qualifying before 2012, or having completed the new course that ran for the first time this year. All currently-qualified UK attorneys (with the exception of the poor souls who qualified after 2012 and have not yet passed the course) should therefore be able to conduct litigation in the UPC.

The draft rules are available here and an explanatory memorandum is here.