Unitary Patent (part 2): Do you have all it takes to become a UPC representative?

Well...

If you are a Patent Administrator / Formalities Officer / Paralegal, the answer is "NO!".

But let me ask you something else, fellow patent admin:

Even if we are not elegible, who do you think is going to prepare and submit all papers so your favourite European Patent Attorney colleague becomes one? If the answer to that question is "What the heck, its gonna be me!", keep on reading!

What is the Unified Patent Court (or UPC) anyway?

I am sure that by this time you have already heard something about the Unitary Patent and the Unified Patent Court . If you have not, you can find here some extra information of important things you need to know.

But, as a brief summary: the Unitary Patent will be an European patent granted that gives unitary patent protection in several European Union countries in just one go. And the Unified Patent Court will become the common court of justice for patent infringement cases for all these countries (instead of national courts of justice).

This will be the first (successfull) European system that will put together patent prosecution and litigation, and, as much as there are a lot of uncertainties about it yet, chances are high that it will come into force in March 2023.

Of course, a patent proprietor does not need to represent him/herself before the court in such important matters as patent litigation, so the Unified Patent Court defines in its rules who can become a representative.

Why should it matter to us?

Litigation is something that patent administrators / FOs do not see much, not to say, we do not have a clue of what it is. Injunctions? Damages? Preliminary rulings?? No, thanks! I think we have enough with priorities, divisionals and renewal fees.

And yet, there is a high chance that we will begin to make use of the Unified Patent Court system, at least for one tiny bit procedure: the most feared Opting-out procedure! I will definitely take my time to make another article about the opting-out, but I would just like to say here that applicants will have the chance to opt-out their European Patent (applications) if they do not want to use the Unified Patent Court for litigation, but national courts instead.

Opting-out must be done directly by the applicant(s) of each patent intended to leave the UPC system, OR, a representative before the UPC can do it on their behalf.

So the question is, who can become a UPC representative?

Who is elligible to become a UPC representative?

Easy: every laywer can become a representative before the Unified Patent Court. So congrats to all of you, lawyers!

Moreover, Article 48(2) of the UPCA defines that an European Patent Attorney can also represent a party before the UPC, as long as they have an European Patent Litigation Certificate (or EPLC). Good news: we already have the rules (in draft at the moment) that say who can opt to this certificate!

You can read all the provisions here , it is not a large document. But, since you are here, if you keep on reading I will ease some of the pain and let you know the highlights of how you can help your favourite European Patent Attorney to obtain this certificate.

1. With an European Patent Litigation Course: the provisions give you more information as to the requirements that Law Schools and Universities have to follow to be eligible to give this certification. Among others, that it must be at least 120 hours and must have a specific curriculum of subjects. So an European Patent Attorney can make this course et voilà!
2. Law diplomas: If you have a bachelor or a master in law, it is your lucky day! You can become a UPC representative automatically.
3. Other certifications by reputed institutions, such as CEIPI, Queen Mary University, and a big etc. As long as you file the certification within a year after the UPCA comes into force.
4. An adventorous European Patent attorney who has already represented clients in court in at least 3 litigation cases over the last 5 years (before the UPCA comes into force), can also become UPC representative. This, as long as (s)he was not assisted by a lawyer in court. Funny enough, you need to give evidence of these litigation cases, but you do not need to say if you win or lose the cases, ha-ha-ha.

Opting-out and representation

If you are a patent administrator just like me, you might be asking, ok, do I need to go through all this representation ordeal just to opt-out my client's patents?

Well, I hear your pain. It is true that there is no possibility to obtain UPC representation any easier if we are only to file opting-outs (as far as I know). This is because if your patent attorney becomes a valid representative before the UPC, he becomes a representative in court as well.

Is there an alternative? Well, of course it is! Power of Attorneys might be your ally here.

You see, the requirements to opt-out a patent (application) are to fill in a form and submit it to the UPC court. This must be done by proprietor(s) or their UPC representative. If you are not elligible as UPC representative, you can still file a Power of Attorney with the signature of all applicants / proprietors of the patent intended to opt-out. And, here we go, the opting out will be registered!

Just a last word

Please remember, fellow patent administrator: At this moment it is a lot of uncertainty of how Unitary Patent and Unified Patent Court will develop. So you are definitely not alone in all this! Every question that you have is worth to be asked. I am sure that a lot of us have the same questions at the moment and, who knows, maybe among us we can find the answers!