From the monthly archives: February 2013

Inspired by this discussion of our recent posting on the latest draft UPC rules of procedure it appears to be high time to have a closer look into Article 48 UPC and related Rule 286 RoP in order to possibly figure out the legislator’s idea of representation rights.

As European and German patent attorneys we still remember the recommendation of the 2006 Venice Patent Judges Symposium according to which only “attorneys-at-law who are fully entitled to represent parties in ordinary civil proceedings in the courts of first instance of the convention states” should be authorised to represent cases before the UPC  (see Venice II resolution, page 11, item 5). Later, at the peak of the lobbying battle for representation rights (see e.g. here and here) also the European Parliament’s JURI Committee and its influential rapporteur Klaus-Peter Lehne, an attorney-at-law and partner of international law firm Taylor Wessing, urged it is of “utmost importance” that

the parties should be represented only by lawyers authorised to practise before a court of a Contracting Member State; the representatives of the parties might be assisted by patent attorneys who should be allowed to speak at hearings before the Court [2011/2176 (INI)]

Different voices came from industry organisations, patent practitioners and academia, who raised for  good reasons (see hereherehere) that European Patent Attorneys should be authorised to represent their clients before the UPC as well.

Before this background, Article 48 UPCA can be understood as an acceptable compromise:

(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.

(3)  The requirements for qualifications pursuant to paragraph 2 shall be established by the Administrative Committee. A list of European Patent Attorneys entitled to represent parties before the Court shall be kept by the Registrar.

(4) … (7)

According to this provision, basically three groups of professionals are authorised to independently represent cases before the UPC, namely

  1. Lawyers,
  2. European Patent Attorneys having the European Patent Litigation Certificate, and
  3. European Patent Attorneys having an appropriate qualification.

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UPC Agreement signing ceremony [UPDATE]

Today, on February 19, 2013 at 1415h, the signing ceremony of the International Agreement on the establishment of the Unified Patent Court will take has taken place in the Justus Lipsius building of the Council of the European Union located in Brussels.

The event can be followed by video streaming:

As far as we know, 22 countries are today going to sign the Agreement (in brackets: year of accession to EU or predecessor organisations):

  1. Austria (1995),
  2. Belgium (1952),
  3. Cyprus (2004),
  4. Denmark (1973),
  5. Estonia (2004),
  6. Finland (1995),
  7. France (1952),
  8. Germany (1952),
  9. Greece (1981),
  10. Hungary (2004),
  11. Ireland (1973),
  12. Italy (1952),
  13. Latvia (2004),
  14. Lithuania (2004),
  15. Luxembourg (1952),
  16. Malta (2004),
  17. Netherlands (1952),
  18. Portugal (1986),
  19. Romania (2007),
  20. Slovakia (2004),
  21. Sweden (1995), and
  22. United Kingdom (1973)

According to Ian Wishart of,

  1. Bulgaria (2007), (see UPDATE below)
  2. the Czech Republic (2004), (see UPDATE below)
  3. Poland (2004) and
  4. Slovenia (2004) (see UPDATE below)

have indicated that they would not be in a position to sign the agreement next week because they still had technical issues to resolve. They are expected to sign at a later date.

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European Interoperability Framework

While nowadays most of the initial filings with the European Patent Office (EPO) or with the Office for Harmonisation in the Internal Market (OHIM) are made via electronic means, a lot of other communication between the respective Office and the applicants or their representatives usually still is dealt with by paper-based means. For example, the EPO sends an awful amount of registered letters every day, and the OHIM mainly uses telefax for sending out Official communications and for receiving responses thereto.

In this context it should be noted that the new Unified Patent Court will be the first major European institution in the field of IP which adopts a policy solely allowing electronic communication, effectively banning all paper-based backdoors. Article 44 of the Agreement on a Unified Patent Court stipulates:


Electronic procedures

The Court shall make best use of electronic procedures, such as the electronic filing of submissions of the parties and stating of evidence in electronic form, as well as video conferencing, in accordance with the Rules of Procedure.

In the 14th Preliminary set of provisions for the Rules of procedure of the Unified Patent Court this matter is picked up by Rule 4, reading as follows:

Rule 4 – Lodging of documents

Written pleadings and other documents shall be lodged at the Registry in electronic form. Parties shall make use of the offcial forms available on-line.

“Written pleadings and other documents shall be lodged at the Registry in electronic form” – no exceptions allowed. At first we note that the internal competence for dealing with filings appears to lie with the Registry of the Court. As a second point, there will be “offcial forms” for each and every potential filing which must be usted and, after being filled in, filed electronically.

Moreover, throughout the full text of the Draft Rules of Procedure there are 25 mentions of “electronic address” of the Court and/or parties involved.

Neither those above-mentioned “official forms” nor the “electronic addresses” are explained in any technical detail within the Draft of the Rules of Procedure.

Closely related to these on-line issues are telephone and video conferences as indicated in Rule 105. There is no Rule defining applicable technologies for such purposes.

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A few days ago, the 14th Draft of the preliminary set of provisions for the Rules of procedure of the Unified Patent Court dated January 31st, 2013, has appeared on the Internet. This means that now all main components of the new EU Unitary Patent & Unified Patent Court system are either final or at least available in a quite recent draft version. The text comprises 382 Rules and covers a wide range of procedural law to be applied in cases before the new court, including:

  • Application and interpretation of the Rules of Procedure,
  • Procedures before the Court of First Instance,
  • Evidence,
  • Provisional Measures,
  • Procedures before the Court of Appeal,
  • General provisions,
  • Fees and legal aid.

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