UK and Swiss patent attorneys can represent clients at UPC

Amid the turmoil of Brexit and the UK’s subsequent withdrawal from the UPC project, one question has stood out: will UK-based patent attorneys with relevant qualifications be able to practice in front of the new court system?

Now the UK market can breathe a sigh of relief. The UPC Administrative Committee has now published the final version of the Rules on Representation regarding patent attorneys. It confirms that European patent attorneys who are registered at the European Patent Office and live in an EPC member state can act on behalf of clients. Importantly, patent attorneys must also have a recognised litigation qualification from a listed institution.

On 19 January 2022, Austria deposited its instrument of ratification of the Provisional Application Phase with the European Council. This meant that the PAP immediately entered into force, officially triggering the start of preparation for the Unified Patent Court.

One year grace

The published document includes institutions in UPC member states. However, it also includes UK-based Queen Mary University and the University of Nottingham, as well as the Intellectual Property Regulation Board (IPRB).

Some patent experts had raised concerns that patent attorneys with qualifications from these bodies would be ineligible to represent clients at the UPC, following the UK’s withdrawal from the project. But the Administrative Committee has clarified the issue. According to the document, UK-based European patent attorneys can represent clients at the UPC upon completion of a litigation certificate from the list of UK institutions.

Although a practitioner must have obtained the qualification before 31 December 2020, it could also be acquired in a one-year transitional period from the court’s launch. Thus, it appears that the UPC Administrative Committee will recognise the litigation certificates of UK institutions. However, those who qualified after this period may have to seek a recognised qualification from an institution in an EU member state.

Patent attorneys in principle

Gordon Harris

Gordon Harris, partner at Gowling WLG, says “A central move to exclude UK-based patent attorneys as well as UK patent litigators might have impacted the start of the UPC, given the UK’s close involvement with the project’s development.”

He adds, “Now the UPC including UK practitioners means it will be well-prepared for any logistical and legal questions that might arise.”

In principle, the UPC will admit all EPO-registered European patent attorneys with the necessary litigation certification. This includes UK-based patent attorneys, their colleagues from Poland, Spain and Switzerland, as well as countries that are member states of the EPC but not the UPC.

As such, patent attorneys from countries outside Europe also have the opportunity to represent their clients before the UPC. In particular, many patent attorneys from China, South Korea and the US work in Munich and London.

UPC lays groundwork

However, Article 134 European Patent Convention requires a European patent attorney to be an EPC state national before they can be entered on the list of EPO professional representatives. Some practitioners feared that obtaining certificates from a UK institution would compromise their ability to be involved in UPC work.

Peter Thorniley

Another potential issue was European patent attorneys who do not reside in an EU member state being ineligible for UPC involvement.

Peter Thorniley, partner at Venner Shipley, says, “The UPC has a significant British flavour. Of course, there would be other options, had the UPC Administrative Committee decided to limit UK practitioner eligibility to represent clients.”

He adds, “But now the court will have direct access to the wealth of expertise the UK’s patent attorneys can bring, including both their own deep knowledge of issues like revocation and validity and their connections with other elements of the UK’s legal services ecosystem.”

English influence

Others in the market suggested that such a rule would also disqualify some EU national patent attorneys who had gained their certification in the UK.

Furthermore, the UK remains under the jurisdiction of the EPC, which continues to inform UPC case law. As such, the absence of UK-qualified European patent attorneys could have impacted the successful start of the court. English is one of the court’s main working languages, and UK patent litigators will have significant influence and input on enacting some of its common law principles. (Co-author: Mathieu Klos)