As the launch of Europe’s Unified Patent Court (UPC) draws closer, its administrative committee has said it will allow UK patent attorneys to practise before the court.
Final preparations for the launch of the court began in January as Austria completed its ratification, paving the way for the provisional application of the UPC to enter into force nearly a decade after the pan-European project was greenlit.
In March, the administrative committee published its “Rules on the European Patent Litigation Certificate and other appropriate qualifications”, outlining the requirements for European patent attorneys, as well as requirements for educational bodies to issue certificates to practise before the court.
UK attorney requirements
Despite the UK’s withdrawal from the UPC Agreement, UK European patent attorneys who hold certain qualifications will have the opportunity to appear before the court, but with certain conditions applied.
Parties must be represented either by lawyers authorised to practise before a court of a contracting member state or by European patent attorneys “who have appropriate qualifications such as a European Patent Litigation Certificate (EPLC)”, wrote Bristows partner Gregory Bacon, following the announcement.
However, because the EPLC will not be available before the UPC opens, “other appropriate qualifications” are allowed to meet the criteria, said Bacon.
The list of courses and certificates that are deemed appropriate during this transitional period includes some in the UK, but now the UK is no longer participating in the UPC, these qualifications must have been successfully completed or granted by December 31, 2020.
UK European patent attorneys holding relevant qualifications from the UK’s Intellectual Property Regulation Board, Queen Mary University of London, and Nottingham Law School will be allowed to represent at the court for a “transitional period” of one year after the entry into force of the Agreement on a UPC.
”The UK will play the same prominent role that it has played in cross-border European patent disputes for decades.”
Geoff Hussey, AA Thornton
Other qualifications that will be allowed during the transition period include courses taught at the Centre d’Études Internationales de la Propriété Intellectuelle (France), Humboldt University of Berlin (Germany), and the University of Warsaw (Poland), among others from Hungary, Italy and Spain.
After the transition period, attorneys wanting to make representations to the court will need an EPLC, which can be issued by universities and other non-profit educational bodies of higher or professional education established in EU member states, as well as by the UPC’s training centre in Budapest.
The minimum duration of the course will be 120 hours of lectures and practical training followed by a written and oral exam.
Parallel litigation
Attorneys from EU member states with rights to practise before the European Patent Office (EPO) will be automatically qualified to make representations.
European patent attorneys will be required to hold a bachelor’s or master’s degree in law, or an equivalent law exam issued by an EU member state.
With this being the case, Jan Walaski, partner at Venner Shipley, said: “Many European patent attorneys are in fact dual-qualified, holding specific national qualifications as well as the right to practise before the EPO.”
Explaining how parallel patent litigation will work at both the UPC and in the UK, Geoff Hussey, partner at AA Thornton, said: “There is expected to continue to be a large volume of national patent litigation across Europe, including within the UPC territory, due to many patents being opted out of the UPC jurisdiction.
“Therefore, the UK will play the same prominent role that it has played in cross-border European patent disputes for decades. However, for those patents that remain within the UPC jurisdiction, to the extent there is an issue of infringement or validity in the UK, a parallel national case will be required in the UK.”
Images, from top: Shutterstock.com / Alexandros Michailidis
