Promoting members at

Council agreed to form a Unified Patent Court (UPC) Task Force led by Vice President, Matt Dixon, to position UK-based European Patent Attorneys at the forefront of UPC representation.

It was formed to work with firms and representative organisations to promote the status of UK patent attorneys as UPC representatives to international audiences, particularly in the USA.

The UK has the second-largest number of representatives listed on the UPC register. The Court opened its doors on June 1 and, as well as traditional litigators acting as representatives, court activity featured a good mixture of small and medium-sized enterprises, international companies and technology ranges.

Matt met with the Bar Council, the IP Lawyers’ Association and other non-patent attorney litigators to discuss a joint strategic approach regarding UK representation at the UPC, which received support. He also participated in meetings with managing partners of patent firms and with their marketing representatives to explain his campaign and to secure broad support.

One of the objectives of the task force was to apply for observer status at the UPC. Despite written support being received from the UK Intellectual Property Office and this being appended to our letter to the UPC Administrative Committee, this application was rejected.

Finally, the task force formulated the following list of seven reasons why we expect UK patent attorneys to be at the forefront of UPC representations, for use with stakeholders and international audiences:

1. The Unified Patent Court is in its early days. This is a rapidly developing system that is not based on any other. Everyone involved is building their experience of the Court, including UK patent attorneys. The first revocation action before the UPC was filed by a UK firm.
2. There is a large community of UK patent attorneys authorised to represent before the UPC. 85% of UPC representatives are patent attorneys and London is the city with the second largest concentration of UPC representatives in Europe. 1 in every 6 registered UPC representatives is a UK-based European Patent Attorney.
3. UPC cases are closely related to EPO oppositions and appeals, in which UK representatives have a strong reputation. The majority of US patentees’ EPO oppositions are defended by UK representatives and about half of EPO oppositions filed by US companies use UK representatives.
4. English is the most available language of the Court. Every Division of the Court has English as a language of proceedings.
5. UK patent attorneys are used to working with clients and judges from outside the UK. More than 80% of EPO oppositions defended by UK representatives are for non-UK patentees and more than 50% are for US patentees. Most EPO Opposition Division and Appeal Board members are from other European countries.
6. UK patent attorneys have national rights of representation before the UK patent courts, which hear infringement and validity together. All UK patent attorneys have been entitled to act as advocates in the Intellectual Property Enterprise Court since 1990. More than 70% of surveyed CIPA members have at least some experience of litigation.
7. The UK already has a reputation for high-quality litigation. The IP framework in the UK ranks second only to the US according to the International IP Index published by the US Chamber of Commerce.

Deputy Chief Executive Neil Lampert worked with the Foreign, Commonwealth and Development Office and Ministry of Justice to ensure all UPC member states were aware of UK patent attorneys’ rights to visa-free travel to the seats of the UPC under the UPC Agreement. Neil worked with Matthew Critten, Chair of the Litigation Committee, to create a one-page document outlining the obligations that signatories of the UPC Agreement had to each other regarding representation and access. With help from the FCDO, this was shared with the immigration departments of all countries hosting seats of the UPC.

CIPA also supported Duncan Matthews, Professor of Intellectual Property Law at Queen Mary University of London, to develop a European Patent Litigation Certificate (EPLC) course, to be offered from QMUL’s facilities in Paris. Members of the UPC Task Force and the Education Committee volunteered to write the course, with support from colleagues based in France, Germany, Italy and the Netherlands. Towards the end of the year, once the outline of the modules had been written and lead tutors appointed, Duncan formally applied to the UPC Administrative Committee for accreditation for the course.

From September, reports and analysis of UPC decisions and orders, prepared by Darren Smyth, Joanne Welch and their colleagues from EIP began appearing the CIPA Journal.