Germany and Britain dominate list of representatives at the UPC

Shortly after the Brexit referendum in the summer of 2016, all patent experts thought the same thing: the United Kingdom is out of the UPC. Whereas British judges, patent attorneys and lawyers were bitterly disappointed, many from continental Europe were delighted. For those in Amsterdam, Düsseldorf, Munich and Paris, it meant one less major competitor.

However, it has not quite turned out that way, as an evaluation of UPC representatives shortly after the court’s launch on 1 June shows.

43% of the representatives at the UPC hail from Germany. This is not a great surprise, as Germany is by far the largest market for patents in Europe. What is a surprise, however, is that British patent attorneys and lawyers are the second largest group with 20%.

This means Britain has slightly more litigators in the system than Italy and France combined. The two countries follow in third and fourth place with 10% and 9%, respectively.

Many patent attorneys, few lawyers

The figures reflect all verified registrations until 2 June. However, the system is still open and registrations are ongoing. The current figures, provided to JUVE Patent by the two British law firms Kilburn & Strode and Carpmaels & Ransford, were reviewed and analysed by the JUVE Patent editorial team.

The UPC publishes a list of representatives on its website. As of 2 June, 3,978 patent attorneys and lawyers had registered to represent UPC proceedings. Since then, the number has not changed.

The vast majority of representatives are patent attorneys. Only 591 lawyers have registered to date. The proportions correspond to the size of the two professions in Europe, where there are far more patent attorneys than lawyers specialising in patent litigation.

France the hesitant

Although France is the second largest patent market in Europe after Germany, French patent attorneys and lawyers have hesitated to register so far, representing only 9%. The proportion of Italian representatives is higher. This is surprising, given that Paris is also the seat of the central division and hosts a local division.

France is considered an important supporter of the UPC, but its lawyers have taken a rather open-minded, wait-and-see approach to the new court. On the other hand, patent attorneys and lawyers from the Netherlands are much more ambitious in their support for the UPC. They want to use the local division in The Hague to gain market share. Nevertheless, the Netherlands constitutes only 4% of the representatives so far.

Not a closed EU event

Despite great efforts from the British IP community since the Brexit referendum, it became clear in February 2020 that the country would not participate in the UPC. Thus, the court launched last week without a UK local division or a central divisional seat and without London patent judges.

British patent attorneys, on the other hand, have registered for the court in large numbers. The court is open to them provided they are European patent attorneys and have a recognised litigation certificate.

Contrary to initial fears of being excluded from the UPC, some British lawyers have also found their way into the system. The list of representatives also includes six Spanish and two Polish lawyers.

The basis for the admission of lawyers is Article 48(1) of the UPC Agreement. The article stipulates that lawyers must be authorised to practice in a contracting member state of the UPC. Since the UK government under Boris Johnson withdrew its ratification in 2020, but not its signature of the UPC Agreement, London continues to be a signatory state. The UPC confirmed this to JUVE Patent.

Spain and Poland, on the other hand, never signed the UPC Agreement. Therefore, Article 286 of the Rules of Procedure seems to take priority over Article 48(1). Experts who were involved in the preparation of the UPC Agreement and the RoP also confirmed this to JUVE Patent.

Article 286 states that “a representative pursuant to Article 48(1) of the Agreement shall lodge at the Registry a certificate that he is a lawyer authorised to practise before a court of a Member State of the European Union.”

The Irish route

While this means that Spanish and Polish lawyers can represent clients before the UPC because they come from EU countries, UK lawyers must show that they are qualified in the UK as well as in an EU country. It does not seem to matter whether the EU country is a member of the UPC or not.

Ireland has signed the UPC Agreement, but ratification will probably not take place until at least 2024 due to a referendum. Nevertheless, for many UK barristers and solicitors it was clear early on that they would go the Irish route.

15 lawyers from Ireland have registered in the meantime. Of these, 14 are partners from Powell Gilbert. The firm is one of the leading patent litigation outfits in London and has an extensive network in Europe. In the past, patent teams like those from Powell Gilbert and Bristows have done much of the coordination work for global and pan-European litigation. The firms do not want to relinquish this strong position.

Therefore, on 31 May Powell Gilbert announced the expansion of its patent practice to Ireland. The London-based firm opened an office in Dublin. All 14 of Powell Gilbert’s partners are registered to practice in Ireland and have now registered at the UPC.

Different strokes

Powell Gilbert’s toughest competitor Bristows, on the other hand, is taking a different approach. Bristows has had an office in Brussels since 2018. Recently, UK partner Gregory Bacon was admitted to the Bar in Belgium. Bacon is also admitted to practice in Ireland, with a number of Bristows’ patent lawyers set to follow suit, including Myles Jelf and Brian Cordery. But so far, Bacon is the only Bristows lawyer to appear on the UPC list.

Mixed firm Carpmaels & Ransford has currently registered 69 patent attorneys and lawyers at the UPC. Already last year the firm has secured the services of French-qualified litigator Agathe Michel-de Cazotte, a partner also experienced in German and UK patent law. Its litigation team can thus represent clients at the court.

Carpmaels & Ransford also has an office in Dublin. No doubt other London law firms are considering the Irish licence.

Complicated regulations

From the data on the UPC website it is not clear on which basis representatives from Poland, Spain and the UK were admitted. Alexander Ramsay, Registrar of the UPC, explained the procedure to JUVE Patent. He says, “In accordance with the UPC Agreement there is an obligation for the Registrar to maintain ‘a list of European patent attorneys entitled to represent parties before the court’ (see UPCA 48.3 and Statute 23.2(b)).”

Alexander Ramsay

He adds, “In accordance with the Rules of the Registry (RoR) and the Rules on the European Patent Litigation Certificate, the Registrar is responsible for the ‘examination of requests for recognition of other appropriate qualifications’ and for the registration of such European patent attorneys (see RoR 16.1(b) and EPLC 15).”

Ramsay further states that there are no corresponding provisions relating to lawyers wishing to represent parties before the court. “Such lawyers shall, however, in accordance with Article 286 of the Rules of Procedure, lodge at the Registry a certificate that he is a lawyer authorised to practice before a court of a Member State of the European Union.”

Furthermore, Ramsay explains that, against this background, the registry manually examines all applications from European patent attorneys claiming to have other appropriate qualifications, other than a European Patent Litigation Certificate. “The registry does not make any corresponding manual checks with regard to lawyers claiming to be authorised to practise before a court of a contracting member state. Lawyers requesting to be on the list are fully responsible they meet the requirements in the UPCA,” he says.