Preparatory Committee re-opens judges recruitment campaign

UPC Judges recruitment 2019

The Unified Patent Court published on 3rd June has announced that the Preparatory Committee has agreed to re-open recruitment for judicial positions to new applications“. This will be the second recruitment campaign after the first in 2016.

The 2019 campaign is a “‘top-up’ exercise to complement the recruitment held three years ago” . As in 2016, this campaign aims at finding legally and technically qualified judges.

This new campaign should also” allow those that were not eligible, or decided not to apply three years ago, to submit an application provided they now meet the correct criteria.

The job adverts for legally and technically qualified judges read :

“Legally qualified judges to serve at the Court of First Instance or at the Court of Appeal – several full-time and part-time posts –
– 6-year terms –

The successful candidates will be part of a new supranational court and contribute decisively by their judicial work and highest standards of competence to ensure that the UPC becomes a widely respected forum for settling patent disputes in the Contracting Member States of the European Union.

Candidates shall be nationals of one of the Member States having signed the UPCA. To be appointed, the successful candidates shall be nationals of Member States having ratified the UPCA. They shall have a good command of at least one official language of the European Patent Office (English, French or German), shall ensure the highest standards of competence and shall have proven experience in the field of patent litigation. Specific training in patent litigation according to Art. 2(3) of UPCA Statute will also be accepted.

Candidates shall possess the qualifications required for appointment to judicial offices in the Member State of which they are nationals. Reference is made to the official information provided in the Information on the selection process of UPC judges. 

In addition, the ideal candidate will have:
–      extensive experience in the field of patent litigation,
–      initiative, high degree of commitment and self-motivation and a proactive approach to ensure efficiency and high quality of proceedings at the UPC,
–      the ability to work both independently and as part of a judicial panel or specialist team, and to meet tight deadlines,
–      well-developed written, verbal and interpersonal communication skills,
–      strong analytical skills,
–      the capacity to work in a multinational and multilingual environment.

Salary and benefits: The UPC offers attractive salaries, allowances, social benefits and a pension scheme comparable to that offered at other intarnational courts. The net monthly salary for this vacancy is of EUR 11 000 for full-time judges at the Court of First Instance and of 12 000 for full-time judges at the Court of Appeal. 

Technically qualified judges to serve at the Court of First Instance and at the Court of Appealseveral part-time posts –
– 6-year terms –

The successful candidates will be part of a new supranational court and contribute decisively by their judicial work and highest standards of competence to ensure that the UPC becomes a widely respected forum for settling patent disputes in the Contracting Member States of the European Union.

Qualifications: Candidates shall be nationals of one of the Member States having signed the UPCA. To be appointed, the successful candidates shall be nationals of Member States having ratified the UPCA. They shall have a good command of at least one official language of the European Patent Office (English, French or German), shall ensure the highest standards of competence and shall have proven experience in the field of patent litigation.

Candidates shall have

  • a university degree,
  • proven expertise in a field of technology and
  • proven knowledge of civil law and procedure relevant in patent litigation.

Specific training in patent litigation according to art 2(3) of UPCA Statute will also be accepted. In addition, the ideal candidate will have

  • extensive experience in the field of patent litigation
  • initiative, high degree of commitment and self-motivation and a proactive approach to ensure efficiency and high quality of proceedings at the UPC,
  • the ability to work both independently and as part of a judicial panel or specialist team, and to meet tight deadlines,
  • well-developed written, verbal and interpersonal communication skills,
  • strong analytical skills,
  • the capacity to work in a multinational and multilingual environment.

Salary and benefits: The UPC offers attractive salaries allowances, social benefits and a pension scheme comparable to that offered at other international courts. The net monthly salary for this vacancy is of EUR 11 000 for Court of First Instance judges (full-time equivalent). ” 

As for the process and timeline the ad specifies that “the successful candidates will be selected on the basis of qualifications and relevant experience, supplemented by interviews. Appointments will be made by the UPC’s Administrative Committee. ” Both dealines for application are midnight CET 29.07.2019

How are trade secrets protected under the UPC Agreement?

TRADE SECRETS under the UPC Agreement

How are trade secrets protected at national level within the EU?

The protection of trade secrets is an essential guarantee for the protection of intellectual property. However, until recently, EU Member States offered very different levels of protection for confidential information. Directive EU 2016/943 adopted in June 2016 thus aimed at harmonizing national legislations.

Indeed, as highlighted by the directive, “there is a higher risk for businesses in Member States with comparatively lower levels of protection, due to the fact that trade secrets may be stolen or otherwise unlawfully acquired more easily. This leads to inefficient allocation of capital to growth-enhancing innovation within the internal market because of the higher expenditure on protective measures to compensate for the insufficient legal protection in some Member States. It also favours the activity of unfair competitors who, subsequent to the unlawful acquisition of trade secrets, could spread goods resulting from such acquisition across the internal market. Differences in legislative regimes also facilitate the importation of goods from third countries into the Union through entry points with weaker protection, when the design, production or marketing of those goods rely on stolen or otherwise unlawfully acquired trade secrets. On the whole, such differences hinder the proper functioning of the internal market.”
All industries should thus benefit from the homogenization of trade secrets at EU level .

Although, while the directive transposition deadline was set for 6th June 2018, EU Member States have actually implemented it at different paces. Companies have however already seized the opportunity to rely on it. In France for example, the Paris Court of Appeal held on 9th October 2018 the first French decision relying on the transposition of the directive (see the decision below). In this case LGE had asked the Court to order Conversant Wireless to present confidential evidence, who opposed it. The Paris Court of Appeal granted LGE‘s request, considering that the confidentiality conditions provided by article L. 153-1 of the French Code of commerce, which transposes EU directive 2016/943, would adequately protect the trade secrets contained in the confidential evidence at stake.

The protection of trade secrets and confidential information is a problem that will similarly arise before the UPC.

How will trade secrets be protected by the UPC?

The UPC Agreement provides for different measures to protect confidential information, at articles 45, 52, 58, 59 and 60.

Article 45 allows the UPC to arrange for private proceedings, and article 52 provides that the UPC may, with the agreement of the parties, dispense with the oral hearing. Article 58 grants the Court the power to order the prohibition or restriction of the collection and use of evidence, while articles 59 and 60 subject the Court’s power to present and preserve evidence as well as inspect premises, subject to the protection of confidential information.

However, the UPC Agreement also contains provisions that may be more challenging for the protection of trade secrets.

Article 10 for example states that the register shall be public (though article 45 provides for private proceedings) . Article 80 adds that the Court may, at the request of the applicant, order the display or publication of the decision.

But what about Non-Disclosure Agreements?

The UPC Agreement does not say anything about Non-Disclosure Agreements. The UPC Rules of Procedure on the other hand specify when the parties can request such agreements.

Hence, when the UPC must give an order “to produce evidence” (Rule n°190), “on the application for preserving evidence” (Rule n°196), or “for inspection” (Rule n°199), measures to preserve the confidentiality of the information at stake can be granted by the Court. Such measures restrict the disclosure of the information “to certain named persons only and be subject to appropriate terms of non-disclosure“.

Rule n°190 for example states: “Where a party has presented reasonably available and plausible evidence in support of its claims and has, in substantiating those claims, specified evidence which lies in the control of the other party or a third party, the Court may on a reasoned request by the party specifying such evidence, order that other party or third party to produce such evidence. For the protection of confidential information the Court may order that the evidence be disclosed to certain named persons only and be subject to appropriate terms of non-disclosure. (Emphasis added)

Rule n°105, 115, 197 and 262 also provide for the Court to adapt respectively the interview conference, oral hearing, order to preserve evience and public access to the register. These guarantee that the information is kept “to the extent necessary, confidential in the interests of one or both parties or third parties or in the general interests of justice or public order“.

Rule n°105 for example provides:

” 1. The interim conference should, where practicable, be held by telephone conference or by video conference. 2. On request by a party, subject to paragraph 1 and the approval of the judge-rapporteur, the interim conference may be held in Court. If the interim conference is held in Court, it shall be open to the public unless the Court decides to make it, to the extent necessary, confidential in the interests of one or both parties or third parties or in the general interests of justice or public order. “

The UPC Agreement and the UPC Rules of Procedure thus, in a similar way than EU member states, transpose the EU directive 2016/943. The UPC Agreement is thus drafted to guarantee that trade secrets are not stolen or otherwise unlawfully acquired. Nonetheless, it will now be for the UPC to apply its discretion and decide consistently when to use the measures provided for in the UPC Agreement and in the UPC Rules of Procedure.

Representative, you shall…What is the proposal for the UPC’s code of conduct saying?

After much debate about the UPC Code of Conduct and the publication of a letter by the Council of Bars and Law societies of Europe (see our post here) highlighting the potential tensions between national codes of conduct and the UPC code of conduct, its proposal has been made public by the Preparatory Committee on the Unified Patent Court’s website.

As explained in its preamble, the code of conduct has been drafted by a working group comprising the EPLAW, EPLIT and epi which “undertook a comparative study of existing professional laws to identify the needs as well as the limitations for regulations within the Code of Conduct”.

The proposed code of conduct has therefore been divided into four articles covering issues related to its field of application, the representatives’ general conduct, witnesses and experts, and change of representation.

Regarding its field of application and in view of the potential conflict between national laws, the UPC rules of procedure and the code of conduct itself, the proposal makes clear in its first article that its scope is limited to the scope required by the rules of procedure. The code of conduct cannot therefore be in contradiction with national laws. On the other hand, in case a conflict arises between the code of conduct and the rules of procedure, the latter will prevail.

The second article lists the principles that must guide the Representatives’s general conduct, who shall:

  • act respectfully, courteously and competently. Representatives’ competency is further defined in the notes as the necessity for representatives to “inform themselves sufficiently about the new system and applicable law to prepare their cases correspondingly”.
  • have due regard for the fair conduct of proceedings, exercise his or her right in good faith, not abuse the Court process, be reasonably accommodating and flexible.
  • not contact a judge about a specific case without the participation or prior consent of the other party’s Representative.
  • serve the interests of their clients in an unbiased manner without regard to his or her personal feelings or interests.
  • ensure the appropriate demeanour of anyone accompanying him or her.
  • not misrepresent cases or facts before the Court (knowingly or where the inaccuracy could easily have been discovered).
  • in case he or she becomes aware that they have misled the court, inform the Court with the consent of their client. If the Representatives’ client refuses to give consent, representatives shall cease to represent that client.
  • not disclose any document that is subject to privilege without the consent of his or her client.

The third article looks specifically at the Representatives’ legal obligations in respect of witnesses and party  experts. The code of conduct states that representatives shall ensure that:

  • witnesses are fully informed about their obligation to tell the truth and of their liability under the applicable national law in the event of any breach of this obligation.
  • experts are fully informed of their obligation to assist the court impartially, being independent and objective and not advocating for any party.
  • the substance of evidence of a witness or expert solely reflect the witness’ or expert’s respective recollection or opinion.
  • reasonable compensation for the work of witnesses and experts is arranged if necessary.

Finally, in case of a change of representation, the former representative shall be responsible of the notification of the change to the Registry without undue delay.

This code of conduct raises however a few questions. For instance,  which national law will be applicable to witnesses? Will it be the witness’ own national law or will it be the national law of the country where it is trialled? One can also wonder whether, independently of which law is applicable, this will create an uneven playing field  in the event of a breach by a witness of her obligations as both options suggest that witnesses would not all be subject to the same national law. Similarly the extent to which a representative will have to “inform” a witness of its liability is uncertain. In fact, does the code of conduct mean that a representative has to advise witnesses on their liability under applicable national laws or does it mean that representatives simply have to alert witnesses? More questions could of course be raised on this code of conduct, for example on the very broad terms used to describe the general conduct of representatives, which may appear particularly vague in comparison with some of the national codes of conduct.

However, as indicated by the Preparatory Committee, further work is expected this month (June 2016) before the draft is tabled again at the meeting of the Committee planned for 30th June…

How is it going to work? A new update on the UPC Case Management System:

Brexit and the German constitutional challenge

On Monday 25/01/2016 was organised in Paris a presentation on the UPC Case Management System with the UPC IT Team. The UPC Case Management System is the platform that will allow the submission of actions and their documents before the UPC, the communication with Judges and Clerks, and the free access by the public to all cases and decisions.

This system is therefore central to the UPC and can already be accessed here. Users are encouraged to leave feedbacks to help shape the system, even if as indicated by the IT Team in its weekly newsletter, no further changes will take place until after March 2016, and all feedbacks “will be logged and put in the backlog for future development which will take place in April 2016“.

Below are the main points developed in this presentation which should clarify the major elements of the UPC Case Management System.

IT and Security:

The Case Management System (CMS) will be available from any device. It will require users to register on the UPC CMS. Registered users will need their email address, their password, and a code sent by text to the user’s phone to log in.

Users will have to register twice: first for the trial version of the UPC CMS (you can do so here) and then to the real version of the UPC Case Management System. (See Registration for more info)

The EU STORK system may be used, although not initially. The aim of the STORK project is “to establish a European eID that will allow citizens to establish new e-relations across borders just be presenting their national eID”. This system would allow users to get connected to the UPC CMS with their national login.

Data is stored in Munich, Germany, by a company which is a Deutch Telecomm subsidiary. Two penetration attempts have been simulated and failed. Twenty attacks have already been recorded.

The IT management will be handed over to the permanent IT Team in Luxembourg in March 2016 .

There will be the possibility to connect law firms’ IT system with the UPC CMS  -to obtain alerts for example. There will also be the possibility to synchronise the Court calendar with firms’ calendars.

The Court’s diary and the case history will be publicly accessible. Once on the UPC CMS, the cases will be freely available to be viewed by the public (see confidentiality section for more info).

Arbitration Centre:

The Arbitration Centre will use the same CMS. The Arbitration Centre CMS will however be independent from the UPC. It won’t therefore be possible for the UPC to access the Arbitration Centre CMS.

Registration:

Internal users: Clerks, Judges, Administrators will be registered by the system administration.

External actors: The parties (claimant and defendant) and third parties (witness and experts) will need to apply for registration before being able to access the system.

At the moment the creation of groups is not possible but it will be allowed soon. All users will need to register individually, then one user will become an Administrator and will be able to create a group of representatives. It won’t be possible to have more than one administrator.

Processes:

The IT Team built the UPC CMS around the Rules of Procedure. Therefore, if the Rules do not provide for a specific provision, the IT Team cannot create it in the IT system. By the end of February/Beginning of March the rules of procedure will be finalised and the IT Team will be able to finalise the UPC CMS.

Cases are included within a process of a pre-determined actions: Infringement, Declaration of non-Infringement, Revocation, Compensation for licences, Action against decision of the EPO.

Each action is organised around a system of logically interconnected sub-processes, for example: submit a statement of claim, raise a preliminary objection.

All actions, undertaken at any stage, of the process are recorded and will be the object of an email to the user, confirming that that specific action has been carried out by the user.

Timers are also available for each task. They will ensure that every action is accomplished within the procedural time limit.

Documents:

Every action is built around documents: forms (which will be pre-filed to save time), pleadings, exhibits, orders, applications.

Documents will be stored on the CMS. It is not possible at the moment to create a draft document and keep working on the system but it is possible to create a draft case, which will only become public and available to the court once it is submitted. It will therefore be possible for an external user to update documents until submission.

If the document is submitted by an external user, it can be rejected or validated by a Court member. If rejected, the external user can submit a request of amendment.

In case of a group of representatives, all members will be able to submit documents.

Confidentiality:

Request for confidentiality can be obtained for confidential documents. It is however not automatic and can be challenged. The documents included in the request for confidentiality will be notified to the judge for an evaluation of the documents’ confidential nature.

If the documents are not deemed confidential they will be available to the public. The submitting party can however withdraw these documents. If they are deemed confidential, the party who submitted them must provide a redacted version, which will be available to the public.

It will be possible to create a confidentiality club, which may include the defendants and/or any chosen third party.

Communication:

CMS will send electronic receipts to confirm that the documents have been received and that an action has been performed for the case. The UPC however still has to provide the details of these emails.

The Participants to the Paris’ workshop asked the IT team to have the possibility to attach to the case the communication with the Judge. The IT Team responded favourably to this request.

Audio (Interim Conference) and Video (Final Hearing) record of court sessions will be available on the CMS.

Opt-out:

A patent can be opted-out by filling a form on the CMS. It requires the patent number. Once the patent number is entered, the information will be extracted from the EPO registers, and will be used for the automatic filling-in of the opt-out form.

The EPO’s information might not be up to date, so it will be important to check the pre-filled form and amend any incorrect information. In fact, if some details are missing or are incorrect the opt-out is ineffective until corrected (Rule 5.6).

Once the information is amended on the UPC CMS, it will become public. The EPO will therefore have an opportunity to amend its register. At the moment, there is however no partnership between the EPO and the UPC. It is therefore uncertain whether the EPO’s registers will be updated.

There will be a different opt-out form for the SPCs.

It is presently only possible to opt-out patents one by one. However the IT Team is looking at an option, which would enable patent owners to opt-out baskets of patents (not more than 30).

Claimants will be able to file a claim even if the patent has been opted-out, to prevent a legitimate action to be stopped by a fraudulent opt-out. In fact when submitting a claim for a patent, which is identified as opted-out by the CMS, its opt-out will be flagged and the CMS will identify the cases in which this patent has appeared. If there is a disagreement as to whether the patent has actually been opted-out (for example the claimant could argue that it has not been opted-out by the patent proprietor but by someone else) it will be to the court to decide whether the patent was opted-out.

The method of payment is not yet scheduled as the fees are not determined yet. If there is a fee it will be payable online.

The Opt-out will be ready by March. No exact date however for the public to start opting-out.

Ownership:

The patent proprietor is the person shown in the relevant register. Rule 8.5 however makes clear that this presumption can be rebutted by the actual proprietor by showing that there are entitled to be recorded as proprietor in each country where the patent has been validated, even if  in fact not registered.

Therefore, if the claimant is not the proprietor, they will be required to submit a declaration of proprietorship following Rule 5.3(e), to prove that they can legitimately pursue the case or the opt-out. This document won’t however be checked by UPC officials.  Thus, if a problem arises the validity of the opt-out will have to be challenged before the court.

Fees:

The fees will be decided in February by the Preparatory Committee. The IT Team will then design a user-friendly fee platform to allow users to pay online. No other form of payment will be possible. The assessment of the fee should be based on “fair royalties” as the Preparatory Committee intends to have simple fee guidelines.

Languages:

Where a Member State nominates a language of proceedings both under Article 49(1) and Article 49(2) UPCA, the claimant may choose the language of proceedings subject to:

-Rule 14.2(b)-the “Belgian exemption” which applies when there is only one local exception;

-Rule 14.2(c)-the judge rapporteur may in the interests of the panel of judges order that the decision may be given in the Article 49(1) language together with a certified translation.

Concerning the CMS, the IT Team is now waiting for it to be finalised to start the translations that will enable claimants to have access to the CMS in English, French or German.

The Protocol to the Agreement on a Unified Patent Court on provisional application

protocol to the agreement on unified patent court on provisional application

What is the “Protocol to the Agreement on a Unified Patent Court on provisional application”?

On 1st October 2015, the member states representatives signed the “Protocol to the Agreement on a Unified Patent Court on provisional application”.

This protocol allows some parts of the UPCA to be applied before the UPC enters into force. It concerns  “article 1-2, 4-5, 6(1), 7, 10-19, 35 (1, 3 and 4), 36-41 and 71(3) of the Agreement on a Unified Patent Court and Article 1-7(1), 7(5), 9-18, 20(1), 22-28, 30, 32 and 33 of the Statute of the Unified Patent Court“. The Protocol will allow  “final decisions on the practical set up of the Court” to enter into application, such as the “recruitment of judges and testing of IT systems“, or the early registration of opt-out demands.

When will it enter into force? 

According to Article 3 the Protocol will only enter into force after 13 states, that have already signed and ratified the UPCA, approve the Protocol. The member states can do so either by signing ratifying or approving it.

On 21st March 2017,  the UK, Sweden, France, Germany, Luxembourg, Denmark, Slovenia, Hungary, Italy and Romania had signed the protocol. Out of these 10 countries only France, Sweden, Denmark, Luxembourg and Italy have ratified the UPCA. This means that 8 further ratifying countries will need to approve the Protocol before it can enter into force.

 

You can view the protocol below:

 

Télécharger (PDF, 362KB)

 

You can view the signing ceremony here

 

 

 

 

 

 

 

 

 

A Code of Conduct for the representatives before the UPC: The recommendations of the Council of Bars and Law Societies of Europe

Last week, the Council of Bars and Law Societies of Europe (CCBE) published its comments  on the Code of Conduct for the representatives before the UPC, drafted by the EPLAW, EPLIT and epi .

The CCBE  thereby responds to the Preparatory Committee’s declaration, after its last meeting on 14th April 2016, that the Code of Conduct would be agreed at the end of May, for it to be ready for the UPC’s entry into force in February 2017.

Rule 290 and 291 of the UPC Draft Rules of Procedure in fact respectively provide that representatives before the UPC must comply with the Code of Conduct and if in breach may be excluded from the proceedings by the Court.

The UPC draft Code of Conduct has not however been made public yet, and the CCBE has not had access to it. The CCBE’s general comments therefore provide a helpful insight into the core principles that should govern the UPC Code of Conduct, and, raise important questions about issues such as independence, impartiality and interpretation.

The CCBE focuses on seven points:

  • “A minimum standard”: The CCBE, fearing that it would be difficult to design “a single Code of Conduct for all representatives covering all matters”,  invites the Preparatory Committee to clearly identify the basic legal principles applying to all representatives irrespective of their nationality or position (lawyer, patent attorney, solicitor, etc) to ensure a minimum standard for all appearing before the Court.
  • “Enforcement of the code”: The CCBE recommends that complaints from the Court about the representatives’ behaviour be “adjudicated  by a relevant body rather than the judges themselves or the Court”.  The CCBE in fact highlight, that the UPC judges may not have been trained to handle complaints, and, that an independent body would be a guarantee for impartiality .
  • “Complaints procedure”: The CCBE warns that “(n)either the Rules of Procedure nor the Code appears to explain how a complaint of a breach of the Code is to be made, whether anyone is free to make such a complaint, to whom they should complain, nor whether there is any time limit”.
  • “Possible conflicting obligations”: The CCBE has identified areas where the UPC Code of Conduct and national codes of conduct may conflict, resulting in impossible ethical dilemmas for representatives who would not be able to comply with both codes. The CCBE therefore calls for a careful review of compatibility of all codes of conduct.
  • “Appeals”: Neither the Rules of Procedure nor the Draft Code of Conduct explain the appeal procedure allowing the representatives to challenge a sanction. The CCBE alerts the Preparatory Committee of this oversight and advises against designating the UPC Court of Appeal as the appropriate appeal mechanism, which might lack the required independence.
  • “Sanctions”: The Rules of Procedure appear to indicate that there is only one sanction available to the UPC judges under Rule 291, namely exclusion from the proceedings. The CCBE however points up that “Regulators and Ethics Committees enforcing Codes of Conduct normally have available to them a wide range of sanctions so that they can deal proportionately with each complaint”. In fact, as explained by the CCBE, the consequences of an exclusion  can be very severe and significantly affect both parties.
  • “Interpretation of the code”: The CCBE advises the Preparatory Committee to clarify whether the  Code is to be interpreted strictly or liberally, i.e. whether the code of Conduct contains general principles or “detailed and unambiguous regulations”.

The CCBE concludes it letter by regretting not to have more time and more opportunities to contribute to the UPC Code of Conduct, a view shared by the UPC Blog. In fact, a consultation of the future UPC representatives on the Code of Conduct that will regulate their behaviour before the Court would certainly have been very fruitful.

The CCBE’s letter of comments can be found below. 

[embeddoc url=”http://www.ccbe.eu/fileadmin/user_upload/NTCdocument/CCBE_President_lette1_1462522685.pdf”]

Rights and Obligations of representatives before the UPC:

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.

On your marks, get set, go! Candidates Judges will be able to apply for the UPC before the end of March 2016.

UPC Judges recruitment 2019

A recent interview of Sir Robin Jacob, Chairman of the UPC Advisory Committee, gives indications as to the procedure and timeline that the UPC will follow to select and appoint judges. This selection should start within two months, with the publication at the end of February/beginning of March 2016 of an announcement and online application.

In 2013 an initial call for expression was published and received over 1300 responses, a much higher number than expected. This was not a formal job application but “an initial assessment prior to the formal application process” which allowed the UPC Advisory Committee to identify 354 eligible legally qualified judges  and 341 eligible technically qualified judges. Out of these candidate Judges,  183 required training and about 20 of them were sent to Budapest last year to learn about  basic patent law. Candidates who applied to this first call of expression and new candidates are now invited to submit their application to the new formal recruitment process.

The new online application process  should allow the Advisory Committee’s Human Resources and Training group to identify very quickly the legal, technical and languages expertise of the candidate judges and therefore facilitate the selection process. It is expected that about fifty legally and fifty technically qualified judges will be selected. The number of appointed judges will initially be kept small to match the expected workload.  A pool of appointable candidates will nonetheless be on hand to allow the UPC to respond if needed to high numbers of cases.

The fact that most judges will be working part-time for the UPC raises however two issues. First under the UPCA, national judges are allowed to work part-time at the UPC but lawyers can only do so with special permission. This, as highlighted by Sir Robin Jacob, can be a problem for countries such as the UK which have a specific tradition of using lawyers as judges on a part-time basis. Moreover, some countries do not permit their judges to be part-time, and this will necessitate an amendment of national laws.