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The Unified Patent Court update: representation rights for European patent attorneys


29th Oct 2015

We have previously reported on the progress of the UPC which seeks to provide an alternative to the current procedure of national validations of a patent granted by the European Patent Office. In the latest development, the 18th draft of the Rules of Procedure of the Unified Patent Court have just been published on the UPC website.

One aspect of the Rules which has been the subject of much discussion by stakeholders is regarding who is entitled to represent parties before the UPC.

Of course, lawyers who are authorised to practise before a court of a Member State of the EU will be entitled to represent parties provided they lodge the appropriate certificate at the UPC registry, and this is set out in Rule 286.

Further, European Patent Attorneys holding a degree in law or who have passed an equivalent state examination in law of a Member State of the EU are also deemed to have appropriate qualifications for the purposes of the representations requirements of Article 48(2).

In addition to the above permanent provisions, Article 48(2) of the agreement also provides a transitional provision for European Patent Attorneys who are entitled to act as professional representatives before the EPO and who have appropriate qualifications such as the European Patent Certificate also to represent parties before the UPC.

Some of the recent discussions centred around the wording “such as” because it implies that the European Patent Certificate is not essential. The Administrative Committee has been charged with deciding who can represent parties before the UPC, and these representation rights are set out in the draft Rules on the European Patent Litigation Certificate and accompanying explanatory memorandum.

According to the Rules, during a transitional period of one year from the entry into force of the Agreement on the UPC, a number of additional qualifications (such as the Queen Mary University of London Certificate in Intellectual Property Law or MSc Management of Intellectual Property) are also deemed to be appropriate qualifications.

What this means is that any registered European Patent Attorney fulfilling one of the alternative requirements laid down in Rule 12 will be entered on the list of entitled representatives, provided that they file a request for recognition of other appropriate qualifications within one year of entry into force of the UPC Agreement. This provision ensures that the UPC can start with a sufficient number of qualified EPA representatives. After this one year period has lapsed, most European Patent Attorneys will need to complete the European Patent Litigation Certificate in order to represent parties before the UPC.

Of course, the Rules regarding representation are still in draft form and therefore may be subject to change before they are finalised.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Mark Bentall
Senior Associate
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Would you like to know more? You can talk to Mark Bentall who will be able to help. Call +44 (0)20 7242 0901

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