IP Cases & Articles

UPC qualification for representation agreed

In the Unified Patent Court (UPC), parties must be represented – they cannot appear without an appropriately qualified representative. On Thursday 03 September 2015, the UPC Preparatory Committee ended speculation on who may be a qualified representative by approving the qualification routes available for European Patent Attorneys (EPAs) to be able to represent clients before the UPC.

In short, the rules will allow the vast majority of UK qualified European patent attorneys to represent clients before the Unified Patent Court, in addition to UK qualified solicitors and barristers. We welcome this decision.

When it begins, the UPC will be an entirely new patent litigation forum. Its procedures and applicable law derive from multiple influences, including the various different court and legal systems of the participating member states including the UK, as well as the European Patent Convention (EPC) and European Patent Office (EPO).

Important to remember that the UPC will be a court, although it will be an entirely new one, and has the potential to attract a huge range of cases, involving many different technologies and legal issues. Some may be comparatively straightforward legally, involving essentially infringement and validity issues only. Others will be much more convoluted, and involve complex issues of law extending beyond patent law and relating to jurisdiction, liability, contract, competition, remedies and evidence, for example. All cases will require highly detailed statements of case (both technically and legally) to be prepared at an early stage of the case.

We believe therefore that having a broad choice and availability of representation for users in the UPC, drawn from across the legal and patent attorney professions, is a good thing. Our attorneys and solicitors have a huge amount of experience of contentious patent work in the courts of Europe and the EPO and in working together to create a seamless patent dispute resolution service.

We look forward to having the opportunity to represent our clients before the UPC in the full range of cases that will be adjudicated there.

Update (Editor's note, D Young & Co patent newsletter October 2015)

On Wednesday 16 September 2015 the United Kingdom Intellectual Property Office (UKIPO) hosted a reception to celebrate the UK Government securing a location for the UK local division and London branch of the Central Division of the Unified Patent Court (UPC). The invited guests comprised members of the intellectual property community in the UK, from industry, the professions and the judiciary, who have been closely involved in assisting the UKIPO and UK Government in its preparations for the UPC over a number of years.

D Young & Co partner Richard Willoughby, who has been contributing to the UKIPO's efforts on the UPC on a number of issues including the UPC Rules and Court fees, directly and indirectly via a number of organisations including LES, IPLA, EPLAW, IPO and CIPA, attended the event.

Baroness Neville-Rolfe, Minister for Intellectual Property, thanked the invitees for all their efforts in helping to bring the UPC closer to a reality, in particular for their advice and input into the process so far. She noted that there was more work still to be done but with the London location now secured, yet another tangible element of the UPC was visible. It is expected that the facilities will be built out within less than a year. The ultimate start date of the UPC remains a little uncertain although it is expected to be either late 2016 or early/mid 2017. Businesses should be beginning their preparations for commencement now, including factoring in the potential impact of the UPC on all aspects of their patent portfolios in Europe, including licensing arrangements.