A guide to the UPC and the UP - Flipbook - Page 476
Luxembourg can act as representatives before the Court even though they cannot, because of
national rules, use the titles referred to in art.1(2) Directive 98/5/EC.
23-07 R.286(1) RoP provides that a lawyer must lodge a certificate at the Registry evidencing their
authorisation to practise before a court of a Member State. The reference in the RoP to Member
State rather than Contracting Member State as used in art.48(1) UPCA is deliberate because,
under Directive 98/5/EC, any lawyer entitled to represent a client before one Member State is
also eligible to represent a client before the court of any other Member State. 9 In subsequent
actions, the lawyer can refer to the certificate previously lodged. In order to assist the Registrar
in identifying the previous action, the lawyer should provide sufficient details such as the case
number and the name of the parties to the proceedings.
Requirements for Patent Attorneys
As Representatives
23-08 In order to act as a representative before the Court, EPAs must fulfil two requirements; the first
is that they must be entitled to act as professional representatives before the EPO pursuant to
art.134 EPC. EPAs may represent clients before the EPO where their name appears on the list
maintained by the EPO. 10 Individuals may be entered on this list where they are nationals of an
EPC contracting state, have their place of business or employment in an EPC contracting state
and have passed the European qualifying examination. 11 A grandfathering exception applies for
one year from the date on which a state accedes to the EPC. 12 Legal practitioners qualified in a
EPC contracting state and having their place of business in that state, may, to the extent that
they are entitled in that state to act as professional representatives in patent matters, act as
representatives in proceedings before the EPO in the same way as EPAs whose names appear
on the EPO’s list. 13
23-09 In addition to qualifying under art.134 EPC, EPAs must, in order to act as a representative
before the Court also have “appropriate qualifications” such as the EPLC. For more information
on the EPLC and what amounts to appropriate qualifications, see the Annex to this chapter.
A list of EPAs entitled to represent parties before the Court is to be kept by the Registrar. 14
R.286(2) RoP provides that EPAs must lodge their EPLC at the Registry or otherwise justify that
they have appropriate qualifications to represent a party before the Court. In subsequent
actions, the EPA can refer to the EPLC or other evidence previously lodged.
9
10
11
12
13
14
Unified Patent Court, Oral Hearing on the Rules of Procedure, 26 November 2014, Academy of European Law, Trier, Germany,
p.483.
art.134(1) EPC.
art.134(2) EPC. Therefore, unlike lawyers, EPAs can be nationals of non-Member States.
art.134(3) EPC.
art.134(8) EPC.
art.48(3) UPCA. See Annex, paragraphs A23-21 to A23-27.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 466
