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20 July 2023
Article 48 UPCA (Agreement on the Unified Patent Court) and Rule 286 of the Rules of procedure define two categories of persons entitled to represent parties before the Unified Patent Court (UPC): a lawyer or a European Patent Attorney. Any representative wishing to appear before the UPC shall lodge at the Registry of the Court a certificate (either a “lawyer certificate” or the EPLC or otherwise justify that he has appropriate qualifications to represent a party before the Court).
Under article 48(2) UPCA, European patent attorneys may also represent parties they must “have appropriate qualifications such as European patent litigation certificate”. The UPC Rule 12 provides the conditions required.
Which patent attorneys are entitled to represent parties before the UPC?
Patent attorneys who are entitled to act as Professional Representatives before the EPO (European Patent attorneys) constitute the second category of persons entitled to represent parties before the Unified Patent Court, to the extent that they can prove either that they have the European Patent Litigation Certificate (EPLC) or that they have the appropriate qualifications like a bachelor or master’s degree in law.
During a transitional period of one year from the entry into force of the UPCA , European Patent Attorneys can demonstrate that by having successfully completed a specific course in one of the institution listed in Rule 12 of the EPLC rules of procedure . The aim of this transitional rule being to allow the UPC to start with enough legal representatives, it is understood that it will only apply during this period of one year transition.
What kind of training did UPC representatives with an EPL certificate receive on the UPC rules?
European Patent Attorneys and other legal representatives wishing to appear before the UPC undergo training on how to litigate with the UPC because the UPC puts in place a unique and still not practiced procedural system in Europe drawing on the best practices of existing national systems. Representatives need to know and to be trained on the relevant rules of procedure: how to prepare for written, interim and oral procedures? How to start infringement actions, revocation actions, actions for declaration of non-infringement, actions for compensation for licences, how to produce evidence and how to ask for provisional measures (injunctions, preservation of evidence)? Training on EU patent law includes for example, Regulation (EC) No 469/2009 on SPCs, key rulings of the CJEU and on enforcement of IP rights.
At this time, De Clercq & Partners has 23 European Patent Attorneys of whom the following 13 have obtained the European Patent Litigation Certificate from Politecnico di Milano, CEIPI in Strasbourg and University of Maastricht and are thus able to represent clients before the UPC. Most of our 13 European Patent Litigators are currently already registered on the UPC’s CMS system or on the verge of being.
All of our European patent attorneys have at least a first degree in different fields of sciences or engineering subject with many having higher degrees, including doctorates or industry experience, in their fields of practice. We all have a passion for science, technology and innovation, we offer our clients considerable flexibility when handling complex cases before the Unified Patent Court.
Written and oral advocacy
At De Clercq & Partners, our EPO oppositions and appeals practice has, for many years, been seen at the forefront of the European patent profession. We pride ourselves on our ability to deliver a first-class service to clients in contentious proceedings, leaving no stone unturned in pursuit of our client’s best interests. We are highly skilled written advocates and our enviable track record in the conduct of oral proceedings makes us a formidable litigation partner.
Representation at the UPC can theoretically be done by either an Attorney at Law or a qualified European Patent Attorney. Nevertheless, given the fast pace scheduled for the proceedings, and the completeness of the subject matters which may comprise complex legal and technical issues, it will be worth constituting interprofessional teams having Representatives of both professions to ensure the handling of the proceedings is optimal.
If you have any questions about representation before the UPC or strategies for procedures before the UPC or national litigation, we would be happy to help. Feel free to reach out to our European Patent Attorneys via email on firstname.lastname@example.org.