A guide to the UPC and the UP - Flipbook - Page 477
As Assisting Patent Attorneys
23-10 Patent attorneys who are not authorised as representatives before the Court may still assist
an authorised representative in a case and speak before the Court. The right to speak is in
the discretion of the Court and subject to the responsibility of the authorised representative
to co-ordinate the presentation of a party’s case. 15 It is expected that this discretion will be
exercised in normal circumstances since it is common practice for patent attorneys to assist
lawyers in litigation. The right of assistance applies to any patent attorney who practises in a
Contracting Member State and who is either:
– An EPA listed on the EPO register; 16 or
– A person recognised as eligible to give advice under the law of the state where they practise
in relation to the protection of any invention or to the prosecution or litigation of any patent
or patent application and is professionally consulted to give such advice. 17
23-11 The rules on privilege 18 and the Court’s powers as regards representatives 19 also apply mutatis
mutandis to assisting patent attorneys. 20
Change of Representative
23-12 If a party changes representative, the change shall take effect from the receipt by the Registry
of notification that a new representative shall in future represent the party concerned. 21
The previous representative remains responsible for the conduct of proceedings and
communications between the Court and the party concerned until the notification is received.
23-13 The Code of Conduct for Representatives 22 provides in r.4 that in the event of a change of
representation in accordance with r.293 RoP, the former representative shall, unless the
circumstances dictate otherwise, be responsible for effecting notification of the change to the
Registry without undue delay. Further, the former representative shall also, without undue
delay, transfer or copy to the new representative all documents that are necessary for the
handling of the case and are not available from the database of the Court. Presumably if there
is undue delay in filing the notification of change of representation, the new representative may
file it. The former representative’s national code of conduct may provide that they do not have
to hand over the files for the case to the new representative until the former representative’s
outstanding invoices have been fully paid. Where local codes of conduct impose obligations
on the respective representatives in the event of a change of representation it is likely that
decisions on such matters will have to be dealt with by the relevant professional associations
and national courts.
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19
20
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r.292(2) RoP.
r.292(1) referring to r.287(7) RoP.
r.292(1) referring to r.287(6)(b) RoP.
rr.287 to 289 RoP. See paragraphs 23-15 to 23-29.
rr.290 and 291 RoP. See paragraphs 23-43 to 23-45.
r.292(3) RoP.
r.293 RoP.
See paragraphs 23-35 to 23-37.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 467
