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.
The rights of Patent Attorneys to appear in Court and to represent clients will be governed by Rules 286 and 292.
Rule 286 – Certificate that a representative is authorised to practice before the Court
1. A representative pursuant to Aricle 48(1) of the Agreement shall lodge at the Registry a certificate that he is a lawyer authorised to practise before a court of a Contracting Member State. Lawyers within the meaning of Article 48(1) of the Agreement are also jurists authorised to practice in patent related matters before a court in a Contracting Member State and they shall lodge a certificate evidencing such authorisation. In subsequent cases the representative may refer to the certificate previously lodged.
2. A representative pursuant to Article 48(2) of the Agreement shall lodge at the Registry the European Patent Litigation Certificate as defined by the Administrative Committee or otherwise justify that he has appropriate qualifications to represent a party before the Court. In subsequent cases such representative may refer to the certificate or other evidence of appropriate qualification previously lodged.
It appears to be of interest that a European Patent Litigation Certificate always is deemed to be sufficient for allowing a Patent Attorney to take over representation whereas other qualifications to justify that he has appropriate qualifications to represent a party before the Court are merely to be considered by the Court on the basis of their own discretionary authority.
If a Patent Attorney cannot not benefit from Rule 286 (2) RoP, then his or here role will be based on Rule 292:
Rule 292 – Patent attorneys’ right of audience
1. For the purposes of Article 48(4) of the Agreement, the term “patent attorneys” assisting a representative referred to in Aricle 28(1) of the Agreement shall mean persons meeting the requirements of Aricle 134(1) or (3)(a) to (c) EPC or the professional requirements of the Contracting Member State to the Agreement in which the individual practises.
2. Such patent attorneys shall 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.
3. Rules 287 to 291 shall apply mutatis mutandis.
On the one hand this means that even a national Patent Attorney admitted e.g. in Germany may appear in Court enjoying a right of audience but, on the other hand, at the discretion of the Court (and, of course, subject to the primary representative’s responsibility to coordinate the presentation of a party’s case) only.
Concerning the signing ceremony of the United Patent Court Agreement scheduled to take place on February 19, 2013, the German Government formally has decided to attend and sign the text. This is what was to be expected. However, it looks as if the Polish Goverment is poised to abstain in response to some lobbying efforts from local industries considering that they might lose more than what can be gained from joining the UPC system. By and large, this does not matter that much at the time being because of Poland is not one of the three largest EU patent filing nations mandatorily required for bringing the Agreement into power. Maybe they might join the club later.
On the contrary, the United Kingdom is one of the “big three” patent filers in the EU, in view of Mr Cameron’s speech on the prospects and conditions of the EU Membership of the UK, and there have been concerns that the Government might delay the ratification procedure until an in/out referendum has been made. Although this question cannot be answered reliably, the European Scrutiny Committee of the UK House of Commons (having been quite hostile towards the EU Unitary Patent and the Unified Paatent Court in the past) now write:
Conclusion
8.27 We thank the Minister for his helpful letter. We note the changes to the UPC Agreement since we published our Report, The Unified Patent Court: help or hindrance?, on 3 May last year. The most significant change is the removal of the ECJ’s jurisdiction over the infringement of unitary patents, which was a principal recommendation of our Report. We are also pleased to note that at least part of the Central Division will be located in London; that there is scope for extending the transitional provisions by a further seven years; and that Supplementary Protection Certificates will fall within the UPC’s jurisdiction.
8.28 However, many of the concerns with the UPC still remain, in particular the effect of bifurcation on forum shopping, the training and quality of UPC judges, the prohibitive expense of using the unitary patent and UPC, particularly for SMEs, and the lack of an up-to-date Commission impact assessment (we remain doubtful at this stage of the benefits to business suggested by the Minister in paragraph 8.24 above).
8.29 Given that the negotiations on the UPC Agreement have now concluded, we are content to clear it from scrutiny. The Minister says, however, that:
“Further negotiations among the signatories will also be necessary to finalise the rules of procedure for the court, to set the level of patent and court fees and establish the governance mechanisms for the court. The Government will ensure that it continues to influence the operational details related to the Agreement and that the views of UK stakeholders are considered in the wider discussions. Separately, signatories will need to consider whether to establish local or regional divisions of the court.”[44]
8.30 In the light of this, we would be grateful if the Minister would write to us at the conclusion of the negotiations on the rules of procedure summarising their content and explain to what extent they mitigate the outstanding concerns we list above, and to what extent they reflect the views of the stakeholders which the Government will be consulting.
Reading the phrase “we are content to clear it from scrutiny” I would be inclined to assume that this language equals to an endorsement directed at the Prime Minister to proceed with signing and timely ratifying the Agreement.
(Drawing taken from Wikimedia; copyright expired)
Axel H. Horns
German & European Patent, Trade Mark & Design Attorney
13 Responses to EU Unified Patent Court: Rules Of Procedure Are Out, More News
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The decisive sentence to me is:
“Lawyers within the meaning of Article 48(1) of the Agreement are also jurists authorised to practice in patent related matters before a court in a Contracting Member State and they shall lodge a certificate evidencing such authorisation. ”
According to my understanding at least British and German patent attorneys fall under this definition. German patent attorneys enjoy rights of representation before the German Federal Patent Court and even the Federal Court of Justice in patent nullity proceedings (i.e., in patent related matters). In England British patent attorneys are entitled to represent clients before the Patents County Court in London.
So where is the error in my reasoning? Does the rather broad wording “jurists” exclude patent attorneys? Who or what is a “jurist”?What about patent attorneys with an additional degree in laws such as an LL.M.?
German Patent Attorneys are not authorised to represent their clients in infringement matters before district courts. -AHH
Again:
” authorised to practice in patent related matters before a court in a Contracting Member State ”
In this section, I can neither find the wording “infringement matters” nor the wording “district courts”.
All I can find is “patent related matters” and “courts”. Are patent nullity proceedings not “patent related matters”? Is the Federal Court of Justice no “court”?
Again, I don’t say my interpretation is correct. But I still don’t see why it is not correct.
[...] [...]
Also in the RoP there seem to be no limitation in the nationality of the European Patent Attorneys who may represent parties according to Art. 48(2) of the Agreement: have I missed something or also non-EU EPA may represent parties?
Of course, we should still read the requirements of the famous European Patent Litigation Certificate…
Rule 286 defines:
“Lawyers… are also jurists authorised to practice in patent related matters before a court in a Contracting Member State”
I can neither find the wording “infringement matters” nor the wording “disctrict courts” in Rule 286. All I can find are the terms “patent related matters” and “courts”.
According to my understanding nullity proceedings are “patent related matters”. Further, the German Federal Patent Court and the Federal Court of Justice are “courts”.
Well, I’d like to refer to Article 134 (8) EPC:
“Representation in proceedings established by this Convention may also be undertaken, in the same way as by a professional representative, by any legal practitioner qualified in a Contracting State and having his place of business in that State, to the extent that he is entitled in that State to act as a professional representative in patent matters. [...]”
“legal practitioner” is translated there with “Rechtsanwalt”.
Hence, in practice patent attorneys have to pass the EQE whereas “Rechtsanwälte” do not.
I think that the term “lawyers” in Article 48 (1) must also be properly translasted as “Rechtsanwälte”.
There is little hope that the Court might judge some day that a humble German patent attorney falls into the category of “lawyer”.
If I may add: contrary to the German version of Art. 134(8) EPC, the German text of the UPC Agreement in Article 48(1) reads:
“Die Parteien werden von Anwälten vertreten, die bei einem Gericht eines Vertragsmitgliedstaats zugelassen sind.”
Since the term “lawyers” is not translated as “Rechtsanwälte”, but generally as “Anwälte” in the agreement it would seem strange to deny German Patent Attorneys the right to represent clients.
German Patent Attorneys are entitled to refer to themselves as “Patentanwälte”, and are also entitled to represent clients before a court, namely the Federal Patent Court, the Federal Court of Justice and in a restricted manner in proceedings before the district courts (§4(3) PAO).
Please note that the Agreement will be equally authentic in its English, German or French version (Art.88(1) UPC).
even further: the German version of Art 49 PCT explicitly refers to “Rechtsanwälte, Patentanwälte …”, whereas in other parts of the PCT both professions are subsumed under the term “Anwälte”. Of course, the PCT does not relate to civil actions, but still, a nice example of another international treaty interpreting theses terms.
The situation in the UK is perhaps more interesting. Id be delighted to hear from anyone that might know something concerning how UK patent attorneys will be categorised.
The legal services act 2007 lists UK registered patent attorneys as “other lawyers” and in certain sections includes them under the definition of “relevant lawyer”. Their regulator IPReg refers to the UK patent attorneys as lawyers.
Under UK law then UK registered patent attorneys (rather than European patent attorneys ) appear to be lawyers.
The definition of lawyer under DIRECTIVE 98/5/EC that is given for the UK is advocate, barrister or solicitor though I don’t know why that definition would be the one used.
I believe it is no longer the case that British patent attorneys automatically have rights before the PCC. Instead they now need one of three certificates- the “Intellectual Property Litigation Certificate”, the “Higher Courts Litigation Certificate” or the “Higher Courts Advocacy Certificate”, albeit all existing UK attorneys have been grandfathered the first one of those.
I assume no-one yet knows whether all or none of those three certificates would qualify an EPA under Art 48(2) but would be interested to hear people’s thoughts.
I don’t know if the word “jurist” really helps resolve whether UK patent attorneys qualify as lawyers under Art 48(1). If it was held to mean only individuals with a law degree that would exclude most but still include a minority of patent attorneys (patent attorney litigators typically have an LLM).
A UK patent attorney with the Higher Courts Advocacy Certificate has right of audience and right to conduct litigation at the Supreme Court giving them more rights than both a normal solicitor and a normal Barrister. Its hard to imagine someone in that situation has not passed their EQEs but if they had not and they were held not to be a “lawyer” then it would seem very odd that they would be excluded from the Unified Court.
Interesting discussion.
I totally agree that the term “lawyer” has to be translated as “Rechtsanwälte”.
Thus, obviously, patent attorneys are ruled out by the first sentence of Rule 286:
“A representative pursuant to Aricle 48(1) of the Agreement shall lodge at the Registry a certificate that he is a lawyer authorised to practise before a court of a Contracting Member State.”
However, the second sentence of Rule 286 stipulates what can also be understood as a “lawyer”, i.e. what goes beyond this ordinary understanding of the word “lawyer” (Russel called this “other lawyers”):
“Lawyers… are also jurists authorised to practice in patent related matters before a court in a Contracting Member State…”
As Russel indicated, in this sentence the understanding of the word “jurist” may be important. One could say that the second sentence of Rule 286 defines three conditions to be fulfilled in order to be called a “lawyer” (“other lawyer” beyond the ordinary understanding), namely that the individual concerned:
1) shall be a jurist;
2) shall be authorised to practice in patent related matters;
3) before a court in a Contracting Member State
According to my understanding, German and at least some British patent attorneys (having one of the certificates) fulfill requirements 2) and 3). The questions to be answered then is, who or what is a jurist?
Is an individual having an LL.M. degree a jurist or not?
Interesting, indeed …
But: What is the general meaning of the term “jurist” in the British English “legalese” language? Merriam-Webster says:
http://www.merriam-webster.com/dictionary/jurist
“one having a thorough knowledge of law; especially : judge”
Apparently that doesn’t help that much here.
If a UK native speaker reads this posting: I should be obliged if you could post another comment explaining the meaning of “jurist” in legal English.
[...] by this discussion of our recent posting on the latest draft UPC rules of procedure it appears to be high time to [...]