Monday, 14 September 2015

New Draft Rules for European Patent Litigation Certificate publised

Will graduation for the European Patent Litigation Certificate look like this?

 The Preparatory Committee has agreed on a new draft for the Rules on the European Patent Litigation Certificate and other appropriate qualifications. The new draft is available on the website of the unified patent court. Also an Explanatory memorandum is published.

The Unified patent court allows parties to be represented by European Patent Attorneys instead of lawyers. The attorney either needs to pass an exam and get the European Patent Litigation Certificate or he must have other qualifications. The European Patent Litigation Certificate ensures that the attorney has knowledge of the rules of procedure of the UPC, relevant law, and advocacy skills. The other qualifications include experience and grandfather rules for existing certificates.

We have discussed a previous draft of the rules before (e.g., here and here). Compared to the draft that we discussed previously, I found the following changes are noteworthy:

An institute that can issue the certificate no longer needs to be established in a contracting member state. It is sufficient to be established in a member state of the European union. This means that, e.g., a university in Spain could start a course to get the certificate. The course may be given in a language of a non-contracting state, e.g., Spanish.

The 'grace period' for existing institutes has been reduced from 3 years to 1 year (see below). Allowing institutes form non-contracting states may become important for this reason. Otherwise, a country that is a bit late with ratifying the agreement could jeopardize the accreditation of its institutes.

The new rules also extend the allowable institutes from universities and non-profit educational bodies of higher education to non-profit educational bodies of professional education.

Advocacy skills has been included in the required subjects of the course. The rules have clarified that the required duration of 120 hours are for lectures and practical training (and not for homework).


The list of existing qualifications that will be allowed has been extended. On the other hand, as noted above, the period in which these qualifications are sufficient has been shortened from 3 to 1 year. This means that these institutes should work on getting their accreditation done before the end of one year from the entry into force of the Agreement on a Unified Patent Court.

The new list is as follows (rule 12(a)):

 (i)    Centre d’Études Internationales de la Propriété Intellectuelle, courses leading to the Diploma on Patent litigation in Europe or to the Diploma of international studies in industrial property (specialized in patents);
(ii)    FernUniversität in Hagen, course "Law for Patent Attorneys” and its predecessor, the course “Kandidatenkurs Fischbachau”;
(iii)    Humboldt-Universität zu Berlin, course “Zusatzstudium Gewerblicher Rechtsschutz“;
(iv)    Nottingham Law School, course “Intellectual Property Litigation and Advocacy”;
(v)    Queen Mary University of London, courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;
(vi)    Intellectual Property Regulation Board, “Intellectual Property Litigation Certificate”;
(vii)    Intellectual Property Regulation Board, “Higher Courts Litigation Certificate”;
(viii)    Intellectual Property Regulation Board, “Higher Courts Advocacy Certificate”;
(ix)    Stichting Beroepsopleiding Octrooigemachtigden, course “Beroepsopleiding Octrooigemachtigden”;
(x)    Hungarian Intellectual Property Office, course “Advanced Course in Intellectual Property”;
(xi)    University of Milano, course “Corso di Perfezionamento in Brevettistica”;
(xii)    University of Warsaw, course “Podyplomowe Studium Prawa Wlasnosci Przemystowej”;


A notable one is number (ix). This course is currently required to become a Dutch Patent Attorney. As a consequence national Dutch Patent Attorney who graduated the course will be grandfathered into the system. (I understand that some of the other courses are also required to become a national attorney for the respective state. Can anyone fill me in, in the comments?)

Experience in judging patent cases has been included as sufficient qualification.



Photo FreeImages.com/Margan Zajdowic, used under FreeImages.com Content License. Photo was not changed. 
 




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6 comments:

  1. Hi everybody,

    let’s assume the UPC starts on 01.01.2017 (well, maybe a bit too optimistic, but let’s just assume). According to R48 first sentence, “during a period of one year from the entry into force”, therefore in the whole year 2017, an EPA will also qualify pursuant to A48(2) if she/he passed one the courses listed in R12(a).

    Is it enough to pass one of these courses in 2017 and then quickly register until the end of 2017? Or does one have to pass a course BEFORE entry into force of the UPC (therefore in 2016), and has a whole year to register?

    Thanks for your answer
    KMKS

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    1. Tricky. I’d guess one has to register in the year following the start of the UPC. So your plan, of quickly passing the course and registering at the end of 2017 may work. (But what do I know...)

      The regulation Rule 12 starts as follows:

      During a period of one year from the entry into force of the Agreement on a Unified Patent Court, any of the following shall also be deemed as appropriate qualifications for a European Patent Attorney pursuant to Article 48(2) of the Agreement on a Unified Patent Court: (...)

      Article 48(2) and (3) of the Agreement read:

      (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.

      In a literal reading Art. 48(2) defines that appropriate qualifications are required to represent. Rule 12 says that the courses in rule 12 are appropriate qualifications only in the first year. Thus according to my literal reading, in the year following UPC-start non-certificate holders on the list of Rule 12 would be tolerated, but not after the first year.

      I don’t think that that is what was intended. So I take it that you can register, as in Art. 48(3) in the first year if you have appropriate alternative qualifications, but not later.

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  2. The course (ii) is required to become a German Patent Attorney

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    1. that's clear - the question is if it makes sense to start the course now (or at soon as possible), or if there is no need to rush as it is anyway too late to benefit from the grandfather provision

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  3. Can I ask a probably stupid question - if I passed the Queen Mary University of London, courses “Certificate in Intellectual Property Law” in 2010, will I have rights of representation before the UPC (or be able to get within a year of the entry into force of the Agreement on a Unified Patent Court)?

    Thanks all!

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    1. The way I understand the current draft is that you need to be registered on the list of entitled representatives (Rule 13). There is a list of qualifications that are deemed appropriate only (?) in the first transitional year (Rule 12). This list includes:

      Queen Mary University of London, courses “Certificate in Intellectual Property Law” or “MSc Management of Intellectual Property”;

      If you are a European Patent Attorney and passed this course, then I suppose you can register for the list of entitled representatives.



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