A guide to the UPC and the UP - Flipbook - Page 475
Representation
Authorisation to Act before the Court
23-01 Arts 48(1) and (2) UPCA provide that, in proceedings before the Court, a party must be
represented by:
– either a lawyer authorised to practise before a court of a Contracting Member State; or in
the alternative
– a European patent attorney (EPA) who is entitled to act as a professional representative
before the EPO pursuant to art.134 EPC and who has “appropriate qualifications” such as
a European Patent Litigation Certificate (EPLC). 1
23-02 For the purpose of all proceedings in relation to a patent, where the RoP provide that a party
performs any act or that any act be performed upon a party, that act shall be performed by or
upon the party’s representative. 2
23-03 Under art.48(4) UPCA, patent attorneys who do not meet the requirements to represent a party
may nevertheless assist authorised representatives and are allowed to speak at hearings of the
Court in accordance with the RoP.
23-04 If a qualified representative claims to be representing a party, this should normally be accepted.
However, if the status of the representative is challenged, the Court may require a written
authority to be produced. Such a challenge may be made by another party to the proceedings
or, presumably, the Court itself. 3
23-05 The rules on representation in arts 48(1) and (2) UPCA do not apply to proceedings relating to
actions concerning decisions of the EPO in carrying out the administrative tasks referred to in
art.9 Unitary Patent Regulation, 4 in relation to the lodging of an application to opt out or
withdraw an opt-out 5 and in relation to applications for legal aid. 6
Requirements for Lawyers as Representatives
23-06 A lawyer is stated to be a person who is a national of a Member State who is authorised to
pursue professional activities under one of the professional titles listed in art.1(2) Directive
98/5/EC. 7 R.286(1) RoP adopts this definition and extends it to include “a person with equivalent
legal qualifications who owing to national rules, is permitted to practise in patent infringement
and invalidity litigation but not under such a title”. This extension is required to accommodate
certain Swedish and Finnish jurists with a legal background who may be authorised by their
relevant professional bodies to practise as a patent attorneys but cannot use the professional
title of “lawyer”. 8 It also ensures that in-house lawyers in countries such as France, Belgium and
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For information on the EPLC and other appropriate qualifications, see the Annex to this chapter.
r.8(2) RoP.
r.285 RoP.
art.48(7) UPCA referring to art.32(1)(i) UPCA. See also r.88(4) RoP. For the rules on representation in relation to such matters,
see chapter 2 (Patent Applications and Securing Grant of the Unitary Patent) paragraphs 2-107 to 2-111.
r.5(4) RoP. See chapter 8 (The Transitional Provisions (Including Opt-outs and Opt-ins)).
r.378(5) RoP. See chapter 20 (Court Fees and Recoverable Costs) paragraphs 20-111 to 20-132.
Directive 98/5/EC of the European Parliament and of the Council of 16 February 1998 to facilitate practice of the profession of
lawyer on a permanent basis in a Member State other than that in which the qualification was obtained (OJ No. L 77,
14.3.1998, p.36).
The 15th draft RoP provided that “persons possessing a law degree (jurist) who are authorised by the Swedish Patent
Attorneys Board or equivalent body in a Contracting Member State” were authorised to practice before the Court.
This definition caused confusion and adverse comment and was therefore replaced with the present wording.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 465
