10 August 2010

Representation Before The Future European and EU Patents Court (EEUPC)

At the EU Competitiveness Council on 4 December 2009, the Swedish EU presidency had achieved a "political breakthrough" (see press release) in negotiations concerning the Community Patent (now EU Patent).Among the key elements agreed on was a Draft Regulation on the EU patent, according to which the EU will accede to the European Patent Convention as a contracting state, and patents granted by the EPO will, when validated for the EU, have unitary effect in the territory of the EU.

However, the agreed package did not comprise a solution to the controversal translation arrangements for the EU patent, which still is subject to intense political negotiations (see e.g. here and here).

Also in the the complementary Draft Agreement on the European and Community Patents Court (now European and European Union Patent Court, EEUPC), proposed by the Czech Presidency on 23 March 2009, a number of issues remained open, including the composition of the panels, the competence of the divisions of the Court of First Instance, the notion of technical judges and the language regime. In June 2009, the Council submitted a request to the European Court of Justice on the compatibility of the draft agreement with the EU treaties, on which an opinion is not expected before summer 2010 at the earliest.

And there is another intense debate among stakeholders relating to the regulation of representation before the new EEUPC, which is controversally discussed among the legal professions involved - lawyers (attorneys-at-law) and patent attorneys.

The related paragraphs 1 to 2 of Article 28 (Representation) of the Draft Agreement read:
(1) Parties shall be represented by lawyers authorized to practise before a court of a Contracting State.

(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 EPC and who have appropriate qualifications such as a European Union Patent Litigation Certificate.

(2a) Representatives of the parties may be assisted by patent attorneys who shall be allowed to speak at hearings of the Court in accordance with the Rules or Procedure.
According to Art. 28 (2) of the Draft Agreement, European Patent Attorneys (EPAs) in the sense of Art. 134 EPC will be, besides lawyers, alternatively entitled for representation if they have proven their approprite qualification by a "EU Patent Litigation Certificate", whereas other patent attorneys not being European Patent Attorneys may only assist the respective represantative, i.e. the respective lawyer or certified European Patent Attorney. 

Here's what three relevant stakeholders think about the draft provisions on representation of EPA's before the EEUPC.

I.  Council of Bars and Law Societies of Europe (CCBE)

Quite naturally, the lawyer's lobby groups, especially the Council of Bars and Law Societies of Europe (CCBE), are "concerned" about the suggested representation regime, even though it introduces the Litigation Certificate as a further hurdle for European Patent Attorneys. For instance, Jonathan Goldsmith, Secretary General of CCBE, critisised in the UK Law Society Gazette that Art. 28 "says nothing about the qualification criteria for such attorneys, regulatory and disciplinary consequences for misconduct, or the position relating to privilege". In a more official position paper, his organisation suggested to amend Article 28 (2) to read
The lawyers representing the parties may be assisted by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 EPC provided that the lawyers assisted in this way maintain full responsibility for complying with all obligations to the Court required of legal representatives.
CCBE then went on to explain why European Patent Attorneys should not be entitled to representation before the EEUPC:
  • Disputes involving patents also involve many other areas of law in which a patent attorney will have no training or experience. Such disputes should be carried out by a suitably qualified and properly trained professional lawyer that can guide the client through all aspects of the case.
  • The vague concept of a European Union Patent Litigation Certificate cannot address and provide the required level of training and no guarantee of appropriate standards can be given to the public;
  • Professional representatives have to be subject to clear, consistent rules of behaviour backed by an effective disciplinary procedure, whereas a certificate provides no guarantee for a behaviour in accordance with such principles. Since in a number of EU countries patent attorneys do not belong to any legal profession, they do not bring the same additional guarantees of professional behaviour as provided by bar members.
II.  The European Patent Institute (epi)

In a recent positional paper of  the European Patent Institute (EPI), which may be seen as a direct reply to the CCBE's observations, the professional body of registered European Patent Attorneys expressed an opposed point of view and stressed that 
the [EEUPC] will be a technical court with new procedures. European Patent Attorneys have technical qualifications, are highly experienced in patent matters, are regulated by a code of professional conduct, and will have training in the new procedures. The adoption of European Patent Attorneys as representatives will have significant cost benefits and provide effective litigation.
In detail, epi worked out the following advantages of representation by EPA's: 

Cost Benefit: The numbers of those representing the parties in a patent action would be reduced with significant cost-benefit, as mentioned in the Final Report "Economic Cost-Benefit Analysis of a Unified and Integrated European Patent Litigation System" by the Institute for Innovation Research of the Ludwig-Maximilians-Universität, 26 February 2009. This is because Art. 28 would allow the client to choose whether to be represented by an EPA, by a lawyer or by a team. This would lead to more competition among representatives and, thus, limit the cost of litigation. By this and other cost effects, smaller businesses would be attracted to patent litigation leading to an increase in the demand for patent litigation. 

Quality of Representation: Besides a number of years training and practice in patent law, EPA's, unlike lawyers, will have an appropriate qualification such as the European Union Patent Litigation Certificate, which will guaratee quality of representation before the EEUPC. No lawyer is at present familiar with the specialised procedural law before the EEUPC. EPA's will have to familiarize themselves with this new procedural law in the same way as lawyers should do so, the difference being that the EPA's will have to satisfy the requirement for the EU Patent Litigation Certificate. 

Lawyers: The cadre of lawyers will include many who have no knowledge of technology, patent law (e.g. the EPC) or of the procedural law of the unified EEUPC. While a lawyer’s education in the field of law is general and broad, it is not specific to the field of intellectual property or patents. Although litigation before the EEUPC will relate to and raise many complex and specific questions of law, the necessary experience, knowledge and expertise to deal with them will not be held by most lawyers, especially if the lawyers come from a state with little or no tradition in the patent field.

Specific expertise: EPA's are trained to defend or attack the validity of patents. Analysis of the scope of protection of patents and the doctrine of equivalents are part of EPA's everyday practice, as well as formulating or considering arguments against the enforcement of a patent, rules concerning the exhaustion of a patent, and classic defence arguments. EPA's have to provide the lawyers with the necessary arguments on both validity and infringement in litigation and also represent in opposition and appeal proceedings patent before the EPO. 

EPA's already act before European Court: The Boards of Appeal of the EPO are an autonomous authority, comprising a Presidium and various Chambers hearing the individual cases, such that already today EPA’s are considered competent to represent parties before a European authority whose Chambers act according to common Rules of Procedure, hear witnesses and experts, like any other civil court, and conduct the proceedings in any of the three official languages. 

Disciplinary procedures: Article 11 of the “Regulation on the establishment of an Institute of professional representatives before the EPO (epi) and the “Regulation on discipline for professional representatives” prescribe rules of professional conduct for EPA's. The “Additional Rules of procedure of the Disciplinary Committee” govern a Disciplinary Committee of the epi and the procedures of the Committee. It is possible that additional special rules of professional conduct may be proposed for EPA representatives before the EEUPC. For lawyers, the rules of professional conduct and the disciplinary procedures vary considerably throughout the EU Member States.

III.  Centre d'Études Intern. de la Propriété Intellectuelle (CEIPI)

In support of such statements in favour of representation by EPA's before the EEUPC, Walter Holzer, course coordinator at CEIPI, University of Strasbourg, emphasises that "adequate representation rights for EPA's in any proceedings before the new pan-European courts is the more relevant, because before these courts infringement and validity issues will be taken together, in order to expedite the proceedings". He further made the following contributions in a presentation on a conference having the promising title "Towards a European Patent Court", held on 16-17 April 2010 at the European Parliament in Strasbourg (see also this report):

A pan-European profession: EPA's up to now form the only harmonised pan-European fully academic profession organised according to international law, with a pan-European training and qualification. The special attributes and thus the common competence of patent attorneys is their scientific/technical background as well as legal training, which enables them to encompass a technical and legal mode of thinking.

Current national situation: In a number of EU an EPC Member States, e.g. in Germany, Austria, Poland and the Netherlands, patent attorneys have traditionally and by law been able to represent on their own before national courts, e.g. in invalidity proceedings or actions for declarations of non-infringement. For historical reasons, in litigation before the national civil courts representation by an attorney-at-law still mandatory. In practice, however, patent attorneys play a major role in these proceedings, in particular in those countries where they enjoy a Right of Audience and can address the court, e.g. in Germany. In some countries, patent attorneys enjoy further going rights, like in the UK or Poland, where they are allowed to represent on their own in infringement proceedings. Also Litigator Certificates for patent attorneys are not new. They already exist, e.g, in the UK, where CIPA fellows have to take an appropriate examination.

Techincal expertise: The involvement of patent attorneys would guarantee that all technical aspects of the case, of which patent attorneys have an intimate knowledge, can fully be taken into account, which is reflected in the technical definition of the infringement or the wording of the claims. After all, any legal argument must be based on the underlying technical facts of the case.

Procedural law expertise: Representation by patent attorneys from all over Europe before a unified European patent court will require an additional legal training, mainly as concerns civil and procedural laws, especially as a unitary EU civil law as such does not exist.

It does not come as a surprise, that Mr Holzer already has a fairly concrete idea about what training should be required for European Patent Attorneys to obtain the European Patent Litigation Certificate.