Tag: Representation

Posted on

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.

Posted on

Can European Patent Attorneys represent parties before the UPC?

The role of representation of European patent attorneys before the UPC

 

According to article 48 of the Agreement on the Unified Patent Court (UPCA), there is an obligation for parties to be represented. Article 48(1) provides for the representation by a “lawyer” authorized to practice before a court of an EU Member State as a general principle, whereas under article 48(2), European patent attorneys authorized before the EPO under A.134 EPC may represent parties before the Unified Patent Court (UPC), provided “they have appropriate qualifications such as European patent litigation certificate”.

 

This language suggests that such Certificate is only one appropriate way among others to acquire the right of representation before the UPC for European patent attorneys.

 

The Administrative Committee issued Draft Rules (http://www.unified-patent-court.org/images/documents/draft-eplc-consultation.pdf) on the Certificate and other appropriate qualifications (hereafter the Draft) in March 2014, as well as a Memorandum on this Draft (http://www.unified-patent-court.org/images/documents/draft-eplc-consultation-memorandum.pdf).

 

The Draft was open to a public consultation over last summer. The content of the current Draft, the Memorandum and the public consultation is discussed below.

 

 

A) The European Patent Litigation Certificate

 

Part one of the Draft relates to the courses leading to the Certificate and the suitable institutions running such courses.

 

The minimum duration of the courses shall be 120 hours (rule 4) and be concluded by both written and oral examinations.

 

The draft EPLC decision stipulates that the Certificate will be issued by universities or other non-profit educational bodies of higher education in Contracting Members States, subject to an accreditation requirement. The Memorandum makes it clear that the institutions providing the courses leading to the Certificate shall not be commercial providers of courses and conferences. Instead, the institutions should be public bodies at an academic level of a university, “due to the public law nature of granting Certificates and in order to ensure a satisfactory and harmonized quality level”.

 

It is to be noted that the Training Center for Judges (in Budapest) may organize a course for European Patent Attorneys and it shall not need an accreditation to provide such course.

 

 

B) The other qualifications

 

As an alternative to the Certificate, European Patent Attorneys seeking to represent parties before the UPC may apply for recognition of their qualifications.

 

Part two of the draft EPLC decision identifies two particular circumstances on the basis of which such alternative qualifications may be recognized:

 

1) Law diplomas (Rule 11)

 

European patent attorneys holding a bachelor or master degree in law or who have passed an equivalent state exam in law of a Member State of the European Union shall be deemed to have appropriate qualifications.

It is to be noted that the suitable law diplomas are not listed as such in the Memorandum. They are merely defined as “providing the necessary knowledge of private and procedural law required to conduct patent litigation”. The “equivalence” will probably have to be considered by an appropriate body on as case by case basis when deciding upon the registration on the list of entitled representatives.

 

Further, it seems that the diplomas may originate from any Member State of the European Union, and are not limited to those of the UPC Contracting Member States, let alone those States having ratified the UPC.

 

Further, and more importantly, these alternative qualifications are to apply indefinitely and are not meant to be transitional, contrary to the interim measures set out under item 2b) below.

 

 

2) The transitional period (Rule 12)

 

Rule 12 of the Draft provides a period of three years from the entry into force of the UPCA, during which European Patent Attorneys may apply for the right of representation before the UPC, based on the two further sets of appropriate qualifications:

 

(a)  Successful completion of one of existing identified IP courses

or

(b)  Previous experience in patent litigation.

 

 

The list of appropriate existing courses under (a) is currently as follows:

 

(i)             CEIPI: courses leading to the Diploma on Patent Litigation in Europe or to the Diploma of international studies in industrial property (specialized in patent);

(ii)            FernUniversität in Hagen: course “Law for Patent Attorneys”;

(iii)           Nottingham Law School: course “Intellectual Property Litigation and Advocacy”;

(iv)          Queen Mary College London: courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;

(v)           Brunel University London: course “Intellectual Property Law Postgraduate Certificate”;

(vi)          Bournemouth University, course “Intellectual Property Postgraduate Certificate”;

[…]

This list of courses is thus not exhaustive and may be further completed. One will note the variety of the courses, some providing basic knowledge in IP, some others being quite advanced and dedicated to litigation.

 

The appropriate qualifications under item (b) are defined as the previous representation of a party, without the assistance of a lawyer, in at least three patent infringement actions initiated before a national court of a Contracting Member State within the five years preceding the application for registration on the list of the entitled representatives.

The experience in representing parties is to be evidenced when applying for the request for recognition of other appropriate qualifications (see Rule 14).

Evidence will include details necessary to identify the infringement actions and/or copies of the power of attorney.

This option under (b) will however not be available to some European patent attorneys, depending on the national law (for example in France, where representation of parties before a national court is only opened to lawyers).

 

C) The public consultation

The consultation on the Draft closed on 25 July 2014. Comments on the Draft were filed by various representation bodies of European patent attorneys, including The Council of Bars and Law Societies of Europe (CCBE), The European Patent Litigators Association (EPLIT),The IP Federation, National bodies of Patent Attorneys such as The Compagnie Nationale des Conseils en Propriété Industrielle (CNCPI) and the Chartered Institute of Patent Attorneys (CIPA).

Broadly speaking, and as expected, the views are that the scope of the Draft is either too broad or overly limited, depending on the bodies and as far as representation by European patent attorneys is concerned.

The submissions of the Public Consultation are currently reviewed by the Committee. According to the latest Preparatory Committee roadmap (http://www.unified-patent-court.org/images/documents/roadmap-201409.pdf), a revised version of the Draft is to be expected for early 2015.

 

D) Right of audience

 

In addition to any rights of representation, “patent attorneys” will also be entitled to a right of audience under A.48(4) UPCA, by assisting the representatives.

 

The term “patent attorneys” is here to be construed in light of the Rules of Procedure.

 

According to the 17th Draft (http://www.unified-patent-court.org/images/documents/UPC_Rules_of_Procedure_17th_Draft.pdf), we understand that rule 292 now provides that the “patent attorneys” entitled to the right of audience should be practicing in a Contracting Member State, as a prerequisite.

 

This may include European Patent Attorneys registered before the EPO (draft rule 292.1 combined with draft rule 287.7), as well as any “person who is recognised as eligible to give advice under the law of the state where he practises in relation to the protection of any invention or to the prosecution or litigation of any patent or patent application and is professionally consulted to give such advice” (draft rule 292(1) combined with draft rule 287.6(b)).

 

These latest draft proposals differ from those of the 15th draft in that they now recite the additional requirement that the professionals should practice in a Contracting Member State in order to be entitled to the right of audience. This provision thus seems to exclude from the right of audience the lawyers and patent attorneys of a party which do not practice in the 25 Member States parties to the UPCA.

 

Incidentally, the “lawyers” authorized to represent parties before the UPC in article 48(1) are those authorized to practice before a court of an EU Member State and seem to be further limited to national of EU Member States under Rule 286 and Directive 98/5/EC (http://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX:31998L0005).

 

It thus seems that non-EU nationals having a title of lawyer in the sense Directive 98/5, such as French avocat or German Rechstanwalt and practicing in an EU Member State may not be able to represent parties before the UPC, although they may have a right of audience.

 

Patent attorneys entitled to the right of audience will be allowed to speak at hearings of the Court at the discretion of the Court and subject to the representative’s responsibility to coordinate the presentation of a party’s case. They will benefit from the attorney-client privilege provided by draft rule 287.

 

These provisions will have to be confirmed once the 17th draft meets agreement, which according to the roadmap of September 2014 (http://www.unified-patent-court.org/images/documents/roadmap-201409.pdf) should be expected for May 2015

We shall post the developments as they occur.

Posted on

UPC Procedure and Parties to Proceedings and Representation:

(A) Licensees:

The holder of an exclusive licence is entitled to bring actions before the UPC under the same circumstances as the patent proprietor, except where the licensing agreement provides otherwise. Under Article 47.2 of the UPC Agreement, the patent proprietor must be given prior notice. A holder of a non-exclusive licence is on the other hand not entitled to bring actions before the UPC, unless the patent proprietor is given prior notice and in so far as expressly permitted by the licence agreement (Article 47.3 of the UPC Agreement).

Moreover, in any action brought by a licensee, the patent proprietor shall be entitled to join the action (Article 47.4 of the UPC Agreement).

 

(B) Representation of third parties before the UPC:

Under Article 48 of the UPC Agreement, representation before the UPC will be mandatory and parties will have to represented by either:

  • a lawyer authorised to practise before a court of a Contracting Member State; or

 

  • a European Patent Attorney who has acquired additional appropriate qualifications such as a European Patent Litigation Certificate. However, the issue of how a European Patent Attorney will obtain an independent right to represent clients at the UPC still has to be considered by the Contracting Member states and the Preparatory Committee.