A guide to the UPC and the UP - Flipbook - Page 489
– Hungarian Intellectual Property Office, course “Advanced Course in Intellectual Property”;
– University of Milano, course “Corso di Perfezionamento in Brevettistica”
– Politecnico di Milano, “Certificato di superamento dell’esame conclusivo del Corso di
Proprietà Industriale – Brevetti”; and
– University of Warsaw, course “Podyplomowe Studium Prawa Własności Przemysłowej”.
A23-20 In addition to the grandfathering provisions for EPAs who either have a law degree or have
completed one of the specified courses (within one year from the entry into force of the UPCA),
an EPA who has represented a party on his own without the assistance of a lawyer admitted to
the relevant court or having acted as a judge in at least three patent infringement actions,
initiated before a national court of a Contracting Member State within the five-year period prior
to the application for registration will also be deemed to have appropriate qualifications again
during the one year period from the entry into force of the UPCA.
Registration
A23-21 Art.48(3) UPCA provides that the Registrar shall keep a list of EPAs entitled to represent parties
before the Court. R.13 EPLC Rules states that EPAs with an EPLC wishing to represent parties in
proceedings before the Court must lodge their EPLC with the Registrar who will then add them
to the list.
A23-22 An EPA who wishes to represent parties in proceedings before the Court either on the basis of
an equivalent law degree qualification or the grandfathering provisions must file a request for
recognition with the Registrar in accordance with r.14 EPLC Rules. The request must be filed in
one of the official languages of the EPO. In the case of an EPA relying on having previously
completed a course from one of the specified institutions under r.12(a) EPLC Rules, the request
must contain proof of the qualification such as a certificate. In the case of an EPA relying on
having previously represented a party under r.12(b) EPLC Rules, the request must include
details of the litigation sufficient to identify the infringement actions such as the name of
parties, the court involved and the date on which the actions were commenced.
A23-23 In contrast to the request for accreditation which is decided by the Administrative Committee,
since the Registrar is responsible for keeping and administering the list of entitled
representatives, r.15(1) EPLC Rules provides that it is the Registrar who must examine and
decide on any requests for recognition of other appropriate qualifications (though he can
consult with the Advisory Committee if he deems it necessary). Provided that the substantive
requirements in rr.11 or 12 EPLC Rules and the formal requirements in r.14 EPLC Rules are met,
the Registrar will enter the requestor on the list of entitled representatives. If the substantive
requirements under rr.11 or 12 EPLC Rules are not met, the Registrar shall reject the request.
If, however, the request meets the requirements of rr.11 or 12 EPLC Rules but fails to comply
with the formalities of r.14 EPLC Rules, the Registrar shall invite the requestor to correct the
deficiencies within a non-extendable period of two months.
A23-24 The general rule regarding the duration of registrations under r.16(1) EPLC Rules is that they
will be permanent. This includes registrations made under the grandfathering provisions.
The explanatory memorandum explains that the introduction of a requirement for continuous
training could be implemented at a later stage.
A23-25 Rr.16(2) to (4) EPLC Rules envisage three instances whereby the Registrar will strike an
individual’s name off the list of EPAs who are entitled to act before the Court. The first is if
the representative ceases to be a registered EPA on the list maintained by the EPO
(though this can be reversed if they are re-entered). The second is where a competent
court or authority establishes that the registration on the list has been obtained by fraud.
The third is where the representative requests that his name is removed from the list of
representatives entitled to act.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 479
