Reades of this blog may have noticed that we try to cover the discussion about representation rights of European Patent Attorneys before the new Unified Patent Court. Our recent postings related to this issue may be found here, here, and here.

According to Art. 48 (1) UPCA, all national lawyers of the UPC member states are entitled to represent cases before the UPC, regardless of their knowledge and experience in patent law and practise. Art 48 (2) UPCA grants such individual representation rights also to European Patent Attorneys according to Art 134 EPC, if they have an “appropriate qualification such as a European Patent Litigation Certificate“.

Now a proposal of the Institute of Representatives before the European Patent Office (epi) came to our attention (download) in which criteria for the required “appropriate qualification” and a structure of the European Patent Litigation Certificate are proposed to the UPC Preparatory Committee which is in charge of definig this issue.

Appropriate Qualification: The paper states that an appropriate qualification of a European Patent Attorney (EPA) should include

abilities [...] going beyond the European Qualification Examination [...]. They should, in particular, reflect the necessary and desirable skills and knowledge for representation before the UPC.

A source of such abilities is seen in the

extensive experience acquired as patent attorney in their respective EPC member state, going beyond representation before the Patent Office.

The paper mentiones the following examples for such experiences:

  • EPAs already qualified to represent before a court in patent matters in an EPC member state and able to afford evidence of an effective experience of representation before such court.
  • EPAs that have successfully completed, before entry into force of the UPC Agreement, one of the courses in patent litigation given by CEIPI, Nottingham and Hagen.
  • EPAs with a Bachelor level law degree from a university of an EPC member state.
  • EPAs demonstrating extensive practical experience of the conduct of patent litigation in an EPC member state, for example by assisting an authorized representative or a judge before national courts in at least five patent litigation cases and/or having commensurate practical experience of the conduct of opposition procedure before the EPO and the Boards of Appeal. 

European Patent Litigation Certificate. For the certificate a modular system is suggested in order to take into account the different levels of legal qualification of national patent attorneys from EPC member states.

In a Core Module the different levels of national education should be ballanced based on an “advanced national patent attorney training”. Such European Patent Attorneys, whose national qualification meets these requirements would then not be required to take this Module. Examples of the issues covered by the Core Moduel are:

  • Basic knowledge of the legal principles of civil law, covering common law and continental law,
  • Basic knowledge of the “Brussels” EU Regulation and various EU Directives in the IP area (particularly the Directive on Enforcement), EU competition law, International IP law (including the Trips agreement and the Hague Convention on recognition and enforcement of foreign judgements in civil and commercial matters), the European Human Rights Convention,
  • Main principles of contract law, IP ownership and company law.
  • Organisation and IP related important case law of the European Court of Justice and the Court of First Instance, including preliminary ruling procedure.
  • Patent infringement and validity, covering claim analysis, Article 69 EPC, literal/non-literal infringement, contributory infringement, exhaustion, defences against infringement, main case law of the UPC with an emphasis on providing practical strategic advice.
In a consecutive Litigation Module, the relevant European Law should be studied, e.g.
  • The Unified Patent Court Agreement and Statute as well as the Rules of Procedure,
  • Pre-suit protocols and filing suit,
  • Determining jurisdiction, forum shopping,
  • Obtaining evidence, seizure procedure (“Saisie”), discovery procedure, other means,
  • Actions for Declaration of Non-Infringement, Invalidity, defence and counterclaims,
  • Infringement Actions,
  • Drafting of briefs, formal and substantial requirements, case management,
  • Rights and obligations of Representatives including conduct toward other Representatives, toward the Judges, experts of the Court and witnesses during the procedure,
  • Use of experts, experiments and witnesses,
  • Enforcement of orders,
  • Arbitration and Mediation,
  • Sanctions and civil liability,
  • Interlocutory injunctions,
  • Practical Case Studies and mock trials.

Conclusion. This paper may represent a good basis for the Preparatory Committee for defining the standards of Art. 48 (2) UPCA. It contains a number of different routes for European Patent Attorneys to qualify for individual representation before the Unified Patent Court and, thus, would be good for them. Especially the suggestion that the courses at the University of Nottingham, the Fernhochschule Hagen and the CEIPI in Strasbourg should be equivalent with the new Litigation Certificate would immediately entitle many colleagues to representation. Another option that would entitle many European Patent Attorneys  already now for representation is the case book of national litigation and EPO opposition cases.

As to the modular system for obtaining the Certificate, I guess that the education of at least British and German national patent attorneys would be equivalent with what is suggested as Core Module.

We shall wait and see what the Preparatory Committee thinks. But this proposal will not be the end of the story, as it can be expected that lawyer associations such as EPLAW or the UK Law Society will want to have a say in this matter too.

About The Author

Volker 'Falk' Metzler

European Patent Attorney, German 'Patentanwalt', European Trademark and Design Attorney, Computer Scientist, PhD, IP Blogger, Father of Two, Mountain Enthusiast

3 Responses to EPI suggests flexible scheme for UPC Representation by European Patent Attorneys

  1. Edoardo says:

    Thanks for the always interesting info.

    I may be missing something, but the doc linked to by the “download” link above does not seem to contain any mention of Hagen, Ceipi or Nottingham. In fact, it seems to be a cover letter for a more detailed paper, which seems the one you are referring to. Would you happen to have the link to the paper?

    Also, like I guess many others out there, I have been pondering which of those three I should enroll into. One can’t help but notice that they are rather different in scope, as well as in duration. While Hagen is two years, Nottingham is done with in less than 12 months. I can’t find any info concerning the CEIPI classes on their website, unfortunately.

    This begs the question: will the EPI/UPC really consider them to be equivalent? Since we are all out there waiting for a clear indication on how best to spend something in the region of 10k€, it would be nice not to pick the wrong one.

    Of course we can all wait and have clear instructions. But I think it’s fair to say that on one here wants to be the last to enroll, when the “correct” course is defined and fully booked. So I guess we will all have to take our chances. Still, the paper you are referring to, seems to be a as good an indication as one can get, so direct link would be much appreciated.

    Thanks again and Regards,

    • Edoardo, thank you for your comment. I am sorry for the cover letter behind the link, I have corrected that meanwhile. You should now find the full proposal under ‘download’.

      As to the three different courses, Hagen certainly is more work than CEIPI. It is a two-years distant-learning program in German (examinations in Munich) concluding with a master thesis which appears to be a tough hurdle for some attendees. The CEIPI Litigation Diploma is a half-year course with one weekend (Friday to Sunday) each month in Strassbourg, as far as I know. However, other than at CEIPI, the Hagen course will earn you a full legal degree (LL.M.), which may justify the larger amount of work for some attendees.

      I think one can optimise workload and benefit by taking the next CEIPI course in spring 2014. As CEIPI is closely connected with the EPO as they already offer EQE courses, it might be fair to assume that their course has very good chances to be approved.

      • Edoardo says:

        Thanks for the updated link!

        As for the courses, yes, Hagen is undoubtedly more work than the two alternatives. But then again, since we are shooting in the dark, who could assume that the “heavier” course is the one with the most chances of success in being considered sufficient. And, worst case scenario, you are left with an LL.M., this not being the case for the other two.

        From a cost perspective, Hagen and Nottingham are more or less in the same league. Costs for the CEIPI classes are not available on their website. Would you happen to know how much the CEIPI is?

        Finally, one must consider that HAgen provides the opportunity to get familiar with the German legal language. Having seen the development of the court so far, I do expect most cases to be handled in Germany AND in German. I may be wrong, but if the past two years are of any use, they point toward such a conclusion.

        Interesting also to see how the EPI is trying to push for a shorter way for national PA. This comes in different forms (points 11a and 11e for a complete exoneration and point 19 for a partial one), but the idea seems to be: national PA + EPA = no certificate (or less) required.

        This seems to me to be aimed directly at German Patentanwälte. As true as it may be that they have enough qualifications for skipping some or all of the future PLC, I’d be very surprised indeed to see the court accepting a distinction between some national PA and some others. Similarly, I highly doubt that the court would be willing to let any national PA+EPA litigate alone in front of them.

        As always, we shall see.

        Thanks for the always useful updates.