The rights and obligations of representatives before the UPC are defined at article 48 of the UPCA and listed in Chapter 3 of the Rules of Procedure.
Article 48(5) UPCA states that:
“(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
the Administrative Committee. A list of European Patent Attorneys entitled to represent parties
before the Court shall be kept by the Registrar.
(4) Representatives of the parties may be assisted by patent attorneys, who shall be allowed to
speak at hearings of the Court in accordance with the Rules of Procedure.
(5) Representatives of the parties shall enjoy the rights and immunities necessary for
the independent exercise of their duties, including the privilege from disclosure in proceedings
before the Court in respect of communications between a representative and the party or any other
person, under the conditions laid down in the Rules of Procedure, unless such privilege is expressly
waived by the party concerned.
(6) Representatives of the parties shall be obliged not to misrepresent cases or facts before
the Court either knowingly or with good reasons to know.
(7) Representation in accordance with paragraphs 1 and 2 of this Article shall not be required in
proceedings under Article 32(1)(i).”
Following Rule 285 of Procedure, the rights and obligations can be broadly divided into three categories:
- Privileges (Attorney-client privilege; Litigation privilege; Privileges Immunities and Facilities)
- Powers (Powers of Attorney; Powers of the Court as regards representatives; Exclusion from the proceedings)
- Duties (Duty of representatives not to misrepresent facts or cases; Certificate that a representative is authorised to practice before the Court; Change of Representative)
I. Privileges:
Rule 287. Attorney-client privilege:
The confidentiality between the representative and their client is subject to Rule 287 (1) (2) (3), which states that before the UPC and before the Arbitration Centre, the followings are privileged from disclosure:
- Advice sought by a client for a procedure before the Court or for any other reason;
- Confidential communication (written or oral) in relation to the seeking or provision of that advice;
- Communication which would not be related to proceedings before the UPC;
- Any work produced by the representative;
- Communication between representatives employed in the same firm or entity or employed by the same client.
This privilege prevents the representatives and his client from being questioned or examined about the content or nature of their communications; it may however be waived by the client (R 287.5).
Rule 288. Litigation privilege:
The followings communications shall be privileged from disclosure:
- Any communication between the representative and third parties for the purpose of, or, for use in any proceedings, including proceedings before the EPO
These communications shall be protected from disclosure in the same way and to the same extent as provided for in Rule 287.
Rule 289. Privileges, Immunities and Facilities:
Representatives appearing before the Court shall enjoy immunity in the interests of the proper conduct of proceedings, in respect of:
- Words spoken or written by them concerning the action or the parties
- Papers and documents relating to the proceedings which shall be exempt from search and seizure
- Alleged infringing product or device relating to the proceedings, which shall be exempt from search and seizure
Representatives shall also be entitled to travel in the course of their duty without hindrance.
Finally, the UPC may waive the representative’s immunity where it considers that representatives are guilty of conduct which is contrary to the proper conduct of proceedings. It is however important to note that the Rules of procedure do not define what is contrary to the proper conduct of proceedings, nor state what the consequences will be for the client.
II. Powers:
Rule 285. Powers of Attorney:
A representative will be accepted as representing a party without them having to justify of their capacity to do so, unless their representative powers are challenged and the UPC orders them to produce a written authority.
Rule 290 & 291. Powers of the Court as regards representatives and Exclusion from the proceedings:
Representatives shall comply with any code of conduct adopted by the Administrative Committee.
The UPC shall have the powers normally accorded to a court of law, and will be able to take sanctions against:
- Behaviours incompatible with the dignity of the Court;
- Behaviours incompatible with the proper administration of justice;
- Any representative who uses their rights for purposes other than those for which they were granted;
- Any representative who is in breach of the code of conduct.
The court may therefore at any time after giving the representative concerned an opportunity to be heard, exclude that person from the proceedings by way of order with immediate effect.
After the exclusion of the representative, the proceedings shall be stayed for a period fixed by the presiding judge in order to enable the party concerned to appoint a new representative.
III. Duties:
Rule 284. Duty of representatives not to misrepresent facts or cases:
Representatives have the duty not to misrepresent facts or cases as mentioned in article 48(6) of the UPCA and in Rule 284 of Procedure, which states that “a representative of a party shall not misrepresent cases or facts before the Court either knowingly or with good reasons to know”.
Rule 286 & 292. Certificate that a representative is authorised to practice before the Court:
Article 48(1) & (2) of the UPCA respectively state that parties shall be represented by lawyers authorised to practice before a Court of a Member State or alternatively by European Patent Attorneys who have appropriate qualifications. (See our post here for more details on the representation before the UPC).
Rule 286 of Procedure, read in conjunction with EU Directive 98/5, gives more details as to who can qualify as a representative before the UPC, and specifies that representatives shall lodge at the Registry:
- a certificate confirming that there are lawyers authorised before a court of a Member State of the European Union; or
- the European Patent litigation Certificate; or
- justify otherwise that they have the appropriate qualifications to represent a party before the Court.
Rule 292 also makes clear that patent attorneys assisting a representative as defined by article 48(1) and 48(2) shall be allowed to speak at hearings of the Court at the discretion of the UPC.
The UPC Case Management System has been updated and it is possible from today to discover and test the application for registering as a UPC representative. This form requires two sorts of information, first the representation entitlement, and then the applicant’s contact details. In conformity with article 48 of the UPCA, five entitlements are listed: “Lawyers authorised to practise in Contracting member States, Patent Attorneys with EPLC, Patent Attorney with Law Diploma, Patent Attorney with other qualifications, Patent Attorney having represented a party on his own.”
Rule 293 – Change of Representative:
Rule 293 declares that parties are allowed to change representative by notifying the Registry that a new representative shall in future be representing the party concerned. The former representative however remains responsible for the conduct of the proceedings and the communication between the Court and the party concerned until the receipt by the Registry of the aforementioned notification.