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. 
 




FreeImages.com/Artist’s Member Name.”
FreeImages.com/Artist’s Member Name.”

Tuesday, 8 September 2015

Unitary patent ratification map

On September 17, I'll participate in a live webcast on the topic of 'Post-Grant Patent Opposition in Europe and the U.S.' organized by the Knowledge Group. I'll explain the new possibilities for patent invalidation offered by the Unified Patent court and give my view on how the UPC may change opposition before the EPO.

I made the graphic above to explain the current ratification status of the Unified Patent Court. In the map of Europe above, all European countries are colored.

On the negative side are the Red and Brown states. The brown states are EPO members but not EU members. They can never ratify the agreement (unless they become an EU member). The red states (Spain, Poland, and Croatia) are countries that at present will not ratify the Agreement on a Unified patent court; either because they are not included in the enhanced cooperation or have given indications that they will not ratify (Poland).


On the positive side are the gold and green states. The dark green states have ratified the agreement. Note that Portugal recently joined the green states. The light green states can ratify, but at as of yet have not. I've colored Italy as a light green state, although technically they are not in the enhanced cooperation yet. After Italy's request to join the enhanced cooperation, this is only a matter of time.

Finally, the gold states (United Kingdom and Germany) are the two states whose ratification is required before the UPC can start. Recently, the United Kingdom announced the location of the London section of the Unified Patent Court; I've not heard much about developments in Germany though.

I have a few invites for the webcast left, which I can offer to readers of this blog. Send me an email if you want one.

The map is based on a blank map by Maix, which is based on a map by Tintazul used under a CC BY-SA 2.5 license.


Monday, 7 September 2015

Portugal finalizes ratification of Unified Patent Court

Portugal has deposited its instrument of ratification. This makes Portugal officially the eighth country to do so. Five more countries, including Germany and the United Kingdom need to follow before the Unified Patent Court and Unitary Patent will be in effect.

Photo "the Barcelo cock" by leo gonzales obtained via Flickr under CC BY 2.0 license (no changes made).

Tuesday, 1 September 2015

Location selected for London branch of Unified Patent Court

Aldgate Tower, the new location of the London part of the Unified Patent Court

The Intellectual Property Office (IPO) of the UK reports that they have selected a location for the London section of the Unified Patent Court. The new court will be located in Aldgate Tower in London. 

At a recent unitary patent conference the UK informed that they would complete ratification of the unified patent court agreement by spring 2016. I interpret this announcement of a location as a confirmation that indeed the preparations for the unified patent court are continuing in the UK. There has been uncertainty on the UK's position on the unitary patent because of its current ambivalence towards the EU.  However, at present there seems to be no indication that the preparations of the UK for the unitary patent are anything different than planned.

The unified patent court has a rather complicated structure. In addition to local and regional divisions, the unified patent court will also have a central division. The central division of the Unified Patent Court will have its seat in Paris, with sections in London and Munich. The local division of UK will also be located in Aldgate Tower.

The central division will have sole jurisdiction for a number of actions. For example, direct actions for revocation of a patent shall be brought before the central division. The cases are divided over the three sections of the central division based on the subject matter of the case. For London these are Chemistry, metallurgy and Human necessities.

IPO Minister, Baroness Neville-Rolfe said today:
"The signing of this lease represents a milestone in the UK’s preparations for the introduction of the Unified Patent Court. Aldgate Tower, with its superb central location, will provide an ideal home for a modern court to support the UK’s and Europe’s leading edge innovative companies. This will further strengthen UK’s legal and professional services sector, and reinforce London’s status as a world leading centre for dispute resolution."
Photo "Aldgate Tower - London" by Jim Linwood obtained via Flickr under a CC-By license. The photo has been cropped.