Currently viewing the tag: "Art 48 UPCA"
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.
Yesterday, the much awaited website of the UPC Preparatory Committee went live under the domain www.unified-patent-court.org. A main purpose of this website is to inform the public about the Committee’s work and the UPC as such (see e.g. Q&A section). One of the most important tasks of the Committee is the preparation of the Rules of Procedure of the future Unified Patent Court.
After an inofficial 15th Draft has been leaked early June, the official 15th draft of the Rules of Procedure has been published yesterday and opened for
public consultation until 1 October 2013.
Written comments are to be submitted to secretariat@unified-patent-court.org. So, please, colleagues, readers, and fellow bloggers, study the official draft and make submissions to the Preparatory Committee if necessary.
The further procedure after closure of the public consultation is explained as well:
[...] the Committee shall after closure of the written phase of the public consultation ask the Drafting Committee to evaluate the contributions received and to make proposals and comments ensuing from the public consultation. Further, the Committee intends to organise a public hearing on the draft rules of procedure in early 2014. The European Commission shall be asked to advise on the compatibility of the Rules of Procedure with European Union law. This will form the basis for the Committee’s Legal Framework Working Group to prepare the draft Rules of Procedure for approval by the Committee. As with all of the Committee’s preparatory work, also the Rules of Procedure will need to be adopted by the UPC’s Administrative Committee once it has been established.
The official version of the 15th draft differs form the inofficial version in a number of ways. One significant difference relates to Rule 286 governing, inter alia, the conditions under which non-lawyers (i.e. professionals that are not attorneys-at-law) may independently represent cases before the UPC. This rule has previously been criticised on this blog because of its striking lack of clarity (see here for the inofficial 15th draft version and here for the 14th draft version), as the 14th draft contained the unclear term “jurist” and the inofficial 15th draft contained an even more unclear recursive definition of the term “lawyer”.
Clarified Rule 286 (1) of the 15th draft RoP now reads as follows, with the crucial sentence highlighted:
A representative pursuant to Article 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 persons possessing a law degree (jurist) who are authorised by the Swedish Patent Attorneys Board or equivalent body in a Contracting Member State. They shall lodge a certificate evidencing such authorisation. In subsequent actions the representative may refer to the certificate previously lodged.
In this earlier posting we speculated about the representation rights of national German and UK patent attorneys before the new Unified Patent Court, based on the wording of Art 48 UPCA and the somewhat odd formulation of Rule 286 of the 14th Draft of the Rules of Procedure:
[...] 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. [...].
We preliminarily concluded that the definition of the term “jurists” may extend the group of lawyers according to Art. 48 (1) UPCA by certain other legal professionals with a specific expertise, such as national patent attorneys that are allowed to represent their clients in national civil proceedings, e.g. German patent attorneys who are authorised to present invalidity cases before the German Federal Patent Court (BPatG) and the Federal Court of Justice (BGH).
Now the 15th Draft of the Code of Procedure (mark up version) has found the daylight – not on an official server of the Preparation Committee, but in a somewhat obscure way via the private US-based mailchimp service.
Besides other interesting amendments in comparison to the the 14th draft (see e.g. here), Rule 286 CoP has been amended by replacing the term “jurist” by the term “lawyer”. The new passage thus reads:
Lawyers within the meaning of Article 48(1) of the Agreement are also lawyers authorised to practice in patent related matters before a court in a Contracting Member State and they shall lodge a certificate evidencing such authorisation.
What is the sense of this – mathematically speaking - recursive definition?
Article 48 (1) UPCA generally covers “lawyers authorised to practise before a court of a Contracting Member State”, i.e. all attorneys-at-law of the Contracting member states. We thus have two definitions, whereas the second defines is a genuine subset of the first:
- lawyers authorised to practise before a court of a Contracting Member State, and
- lawyers authorised to practice in patent related matters before a court in a Contracting Member State.
What is the sense in clarifying that a genuine subset of the group of entitled lawyers is entitled as well?
The most probable answer is that this recursive – and thus unclear – definition is nothing more than a drafting error caused by a quick-and-dirty approach to end speculations like the above ones about representation rights of some national patent attorneys. In the present form, Rule 286 (1) 15th Draft CoP might then just be useless and needs to be cancelled in the 16th draft.
On the other hand, one may also argue that the existence of Rule 286 (1) changes (downgrades) the scope of the term “lawyer” in Art 48 (1) UPCA to “person practicing law” or simply “legal counsel”, which would immediately render the two definitions meaningful again, as they would read
- legal counsels [generally] authorised to practise before a court of a Contracting Member State, and
- lawyers authorised to practice [only] in patent related matters before a court in a Contracting Member State.
The first definition would then cover attorneys-at-law and the second, again, such national patent attorneys that are authorised to represent certain patent cases before national civil courts. In this case, however, the amendmet would be useless as well as it does not change anything as compared to the 14th draft version.
Regardless of the way Rule 286 (1) may be interpreted in the present form or amended in future, it certainly is not an indication of the utmost care the Preparation Committee should pay to the Rules of Procedure as the backbone of the new court system.
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 here, here, here) 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
- Lawyers,
- European Patent Attorneys having the European Patent Litigation Certificate, and
- European Patent Attorneys having an appropriate qualification.
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