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Litigation at the Unified Patent Court – Getting the Right Representatives

By Matthew Howell, Partner

Now that the Unified Patent Court (UPC) has opened its doors, prospective users of the Court (both patent proprietors and potential defendants) will be considering who should represent them in proceedings at the UPC.

Patent litigation is inherently complex. Infringement and validity often turn on subtle technical details of a product or patent, so for effective patent litigation the parties’ representatives need a combination of skills:

  • a strong grasp of the law on infringement and validity;
  • a detailed understanding of the technology behind the patent; and
  • an ability to present complex technical arguments in writing and orally.

A common approach to patent litigation is to use a team consisting of a patent attorney and a specialist litigation lawyer to prepare written proceedings, with a barrister or other advocate being brought in to present the case at trial.

A different approach is possible at the UPC. Although the UPC Agreement specifies that parties to UPC proceedings shall be represented by “lawyers authorised to practise before a Court of a Contracting Member State”, that Agreement also allows European Patent Attorneys (EPAs) with appropriate litigation qualifications to represent parties before the UPC.

Appointing appropriately-qualified EPAs as representatives in UPC litigation has many advantages.

Litigation at the UPC shares many features in common with opposition proceedings at the European Patent Office (EPO).

For example, EPO oppositions and UPC revocation proceedings are both front-loaded, document-heavy proceedings requiring detailed written statements of case at the outset. EPO oppositions and UPC proceedings both limit the amount of witness and expert evidence allowed, and both conclude with a relatively short oral hearing.

The UPC’s Rules of Procedure impose very short deadlines in UPC litigation. EPAs are used to working effectively to short deadlines in their day-to-day patent prosecution work before the EPO and national patent offices, as well as in opposition and appeal proceedings at the EPO.

Oral hearings (trials) at the UPC will require complex technical arguments to be expressed clearly and concisely. Oral advocacy of this kind is a skill that European Patent Attorneys develop through their work in work in representing clients at oral proceedings before the Examining Divisions, Opposition Divisions and Boards of Appeal of the EPO.

The law applied by the UPC will include the European Patent Convention (for questions of patent validity) and the UPC Agreement (for questions of infringement). Through their day-to-day patent work, EPAs have extensive experience in dealing with validity under the European Patent Convention. The provisions of the UPC Agreement relating to infringement are similar to provisions on infringement in national law, with which EPAs are well acquainted at least in the jurisdiction in which they practice. So EPAs will likely have as much (if not more) experience as traditional lawyers in dealing with the substantive law on validity that will be applied by the UPC, and in dealing with similar infringement provisions as those applied by the UPC.

Additionally, the UPC Agreement gives the UPC jurisdiction for actions concerning decisions of the EPO relating to the administration of Unitary Patents. EPAs are familiar with the EPO’s rules relating to Unitary Patents through their regular handling of Unitary Patents, and so will be best placed to handle actions relating to the administration of Unitary Patents.

From a technical standpoint, all EPAs must have a background in a technical discipline, and they gain even deeper knowledge of relevant technologies through their work in drafting and prosecuting patents. Patent prosecution by its nature exposes EPAs not only to their clients’ inventions, but also to a wide range of complex technical disclosures which must be analysed and interpreted to formulate arguments in support of the invention for which a patent is sought.

As an appropriately-qualified EPA (or team of EPAs) possesses all the technical and legal skills required for effective litigation at the UPC, it makes sense, both technically and financially, for EPAs to be heavily involved in litigation at the UPC, either in a lead representative role or providing technical and legal support to a litigation specialist.

At HLK we have almost 40 EPAs who are qualified to act before the UPC. We can offer expertise in all major technical disciplines, such as IT (including artificial intelligence and software), life sciences, chemistry, electrical and electronic engineering, mechanical engineering, and materials sciences.

Find more information on our unique approach to litigation at the UPC here.

Please contact your usual HLK attorney or if you would like further details of our UPC litigation offering, or view our UPC webpage for more UPC information and updates.

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact or your usual HLK advisor.

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