Who can act in European patents?

It is a year since 24 EU member states signed an intergovernmental Agreement on a Unified Patent Court (on 19 February 2013). At the time, there was confidence that the first patents would be issued at the beginning of this year, but to date, only Austria and Malta have ratified the agreement into their national law.

In the UK, before parliament can proceed, the domestic law must be adapted, and a consultation is planned for the spring. Formal ratification is not expected before 2015. In Denmark, there will be a referendum on the question, planned for the day of the forthcoming European elections. Ireland will also have a referendum, arising from constitutional requirements.

At least 13 contracting states are required to ratify, and they must include France (Paris is the official seat of the central division of the court), the UK (which will hear disputes on chemicals, medical biotechnology and hygiene), and Germany (Munich is the location of the court’s administration, and cases on mechanical engineering will be heard in Germany).

The agreement aims to ensure that inventors will be able to file for a patent in any official EU language, while the patent itself will be issued in one of English, French or German, giving protection across most of the EU through a single court. Machine translations on patent content and protection are making good progress: those to and from English are already available. It is now thought that the first patents will not be issued before next year, or even the year after. 

A preparatory committee, made up of representatives of signatory member states, is working on setting up the future court system. It consulted on its future rules of procedure in June 2013, and issued the final draft earlier this month, with the aim of it being ready in summer 2014. A call for candidacies has been published to draw up a shortlist for patent court judges – the call was for 50-100 positions, and has prompted 1,300 responses across Europe.

A serious issue has now arisen regarding the right of representation. Article 48 of the agreement makes it clear that there are two groups of people who can represent a party before the new court: ‘lawyers authorised to practise before a court of a contracting member state’ (that’s us), and, alternatively, ‘European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 of the EPC [Convention on the Grant of European Patents of 5 October 1973] and who have appropriate qualifications such as a European Patent Litigation Certificate’.

A draft paper has recently been produced by the legal working group of the preparatory committee on the topic of the European Patent Litigation Certificate. It sets out the requirements of the certificate and proposes existing qualifications which will be recognised, as well as the procedure for registering as a qualified representative. It has come to our attention only now, and the deadline for decision is apparently 18 March, which gives no time for proper consultation.

A number of concerns spring to mind on reading the document. My own organisation, the Council of Bars and Law Societies of Europe (CCBE), is considering it and will come up with an official position in due course. Examples of possible concerns at this stage are as follows: there is no proposal for quality control of the courses; a European Patent Attorney who completes the course successfully can be awarded a certificate, without a standard definition of success; the proposed duration of the course – 120 hours – is almost certainly too short, and it is not clear what will count for the 120 hours to be achieved.

A few years ago, the CCBE issued a paper in which it said that ‘disputes involving patents are not limited to technical matters or purely patent law matters, but involve many other areas of law in which a patent attorney will have no training or experience. For patent litigation, there is a need to possess a broad legal education including many substantive and procedural legal issues which in general are not possessed by patent attorneys, either by training or experience’.

That is why the European Patent Litigation Certificate is important, and a full and proper consultation is required. There was a full consultation on the rules of procedure: why not on the rights of representation, which are as important in ensuring the court’s future success?

Jonathan Goldsmith is secretary general of the Council of Bars and Law Societies of Europe, which represents around a million European lawyers through its member bars and law societies. He blogs weekly for the Gazette on European affairs