Wednesday, 25 June 2014

Public consultation on draft proposal for European Patent Litigation Certificate for European Patent Attorneys

The Legal Working Group of the Preparatory Committee finalised its proposals on the draft European Patent Litigation Certificate pdffor European Patent Attorneys and published this on 13 June 2014 for 6 weeks allowing users to make comments.

The draft proposals are accompanied by an Explanatory Memorandum pdfwhich further details the background.

The draft Rules on the European Patent litigation Certificate and other appropriate qualifications pursuant to Art. 48(2) of the Agreement on a Unified Patent Court include:
  • requirements for institutes that may issue the European Patent Litigation Certificate, and the required curriculum of the course to be accredited as a European Patent Litigation Course as well as requirements as to minimum course duration (120 hours; probably, contact hours - so a study load of in total at least 500-600 hours) and the examination (shall be written and oral examination);
     
  • permanent other appropriate qualifications:
    European Patent Attorneys having a bachelor or master degree in law according to relevant educational standards in a member State or an equivalent state exam in law of a member State of the EU.
    • The Memorandum clarifies that "Such diplomas provide EPAs with the necessary knowledge of private and procedural law, required to conduct patent litigation
       
  • other qualifications during a transitional period of three years from entry into force of the Agreement on a Unified Patent Court. The Memorandum clarifies that this Rule "introduces a transitional measure which takes in its points (a) and (b) into account that  specific courses  are  already  available  to  prepare  EPAs  to  patent  litigation  and that  in  some Member States patent attorneys are already authorized to represent parties before the  national courts in patent infringement cases."
     
    • (a) European Patent Attorneys having successfully completed a course from a proposed list of -now- seven courses deemed to be an appropriate qualification: two from CEIPI, one from FernUniversitat Hagen, one from Nottingham law school, one from Queen Mary College, one from Brunel University London, and one from Bournemouth Univsersity)
      • At first glance, the courses seem to range from very extensive (Patent or IP) Litigation courses of upto 1000 study hours or more to significantly less evolved courses on management of IP or IP certificates;
      • The list ends with "[...]", which appears to be an open invitation to propose more courses. I would expect that some courses leading to a national patent attorney qualification in a member State, where these courses include general law, private law, international private law, European Union law, Enforcement Directive, overview of infringement/ enforcement/ nullification proceedings in different Member States, and litigation practice will be proposed  and accorded to be added to the list;
      • The Memorandum clarifies that, "where appropriate, other courses preparing EPAs to patent litigation in a  satisfactory  way  may  be  added  to  this  list  before  the  entry  into  force  of  the  UPC Agreement, whether they be courses already existing at a national level in the Contracting Member  States  or  courses  created  or  updated  in  order  to  comply  with  the  Course’s requirements foreseen in the Draft EPLC decision and to be accredited as an EPLC Course after the entry into force of the UPC Agreement".
      • In view of the draft status, and with the draft being still open for consultation, it is not yet certain whether all seven courses will remain on the list, or whether some of them will be successfully challenged as appropriate;
    • or
    • (b) European Patent Attorneys having represented a party on his own without the assistance of a lawyer admitted to the relevant court in at least three patent infringement actions, initiated before a national court of a Contracting member State within the five years preceding the application for registration.
      • The Memorandum clarifies  that this clause "states  that  practical  experience  acquired  by  having  represented  a  party in three patent infringement actions initiated before a national court of a Contracting  Member State within the five preceding years is also recognised as appropriate qualification.  This sub-paragraph  focuses  on  recent  experience  acquired  as  a  representative  in  patent  infringement actions, in order to ensure that EPAs qualifying under this rule have acquired a  personal and up-to-date practice in areas such as orders to produce or preserve evidence,  provisional and protective measures, injunctions, counterclaims for revocation or evaluation of  damages.  In  this  respect,  experience  acquired  in  assisting  a  representative  or  in  other actions such as revocation of patents or appeals against decisions of patent offices is not sufficient to ensure that an EPA has developed a personal and adequate knowledge of case  management   in   all   areas   of   competence   of   the   UPC.   The   number   of   three   patent  infringement actions within five years takes into account that the amount of patent litigation  varies among the UPC Member States."

The consultation will close at midnight on Friday 25 July 2014. Comments must be sent electronically to secretariat@unified-patent-court.org. This email address is being protected from spambots. You need JavaScript enabled to view it.

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