Certain patent attorneys (patent attorney litigators) have the right to conduct intellectual property litigation in England and Wales, being “any matter relating to the protection of any invention, design, technical information, or trade mark, or similar rights, or as to any matter involving passing off or any matter ancillary thereto” (from the Higher Court Regulations of the Chartered Institute of Patent Attorneys; emphasis added). For certain patent matters they therefore offer an alternative to solicitors, who until recently have had exclusive rights to conduct such litigation before the Courts. A recent case (Atrium v DSB) has clarified the extent to which the patent attorney litigator’s rights of representation apply.

The litigation concerned royalty payments allegedly due under a technology transfer agreement. Under the agreement, royalties were payable if a product sold by the assignee incorporated certain transferred technology and higher royalties were payable if that product that fell within the claims of the transferred patent rights. The parties disputed whether royalty payments were due on a certain product subsequently sold by the assignee, and the claim proceeded in the High Court (the main first instance court for intellectual property litigation). The assignee was represented by a patent attorney litigator, who sought declaratory relief that they were entitled to act on behalf of the assignee, not least because of the possibility for adverse consequences on costs recovery and privilege if they were not so entitled.

The judge held that despite the somewhat fuzzy wording of the Regulation that it was not limited to a narrow interpretation of “protecting inventions”, such as cases involving prosecution and enforcement of patents and related intellectual property. Intellectual property rights could be protected and exploited in different ways – the rights might be exploited by the owner himself, licensed or sold. A royalty dispute would equally concern the “protection” of IP rights for the purposes of the Regulation. The right to act was therefore much broader, and included royalty payments under agreements relating to inventions, even where the payments were deferred. The judge also held that the scope of privilege for patent attorney litigators was co-terminous with the patent attorney litigator’s authority to act under the CIPA Regulations.

Co-Author: Dr. Gregory Bacon
Associate, Bristows


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One comment

  1. Full rights of representation of (European) Patent Attorneys before the National Courts no less than Attorneys-at- Law enjoy.

    Although European Patent Attorneys deal with patent infringement issues as professional legal counsels to their clients they still do not enjoy full representation rights or no rights of representation at all before the national courts in Europe.
    Exceptions are e.g. Germany, England and the Netherlands. German patent attorneys enjoy rights of representation before the German Federal Patent Court in nullity proceedings. In patent litigation cases German patent attorneys together with an attorney-at-law represent their clients before German District Courts.
    In England UK Patent Agents are entitled to represent clients before the Patents County Court in London. When they have a litigator’s certificate these patent attorneys can also represent clients before the High Court. A Dutch patent attorney has pleading rights before the District Court of The Hague, the Appeal Court of The Hague and the Supreme Court, but has still to involve an attorney-at-law. The Dutch patent attorney acts before these Courts as a co-counsel.

    The federation of companies active in the IP field in the European Union has applauded the proposal to grant litigation rights to European Patent Attorneys with a ‘litigator’s certificate or equivalent training’ before a future European and Community Patent Court. Main reason for the enthusiasm of these companies for the entitlement of European Patent Attorneys to represent them in Court is the opportunity to save on ligation costs as there will be no requirement to also involve an attorney-at-law. This would mean that litigation costs may in many cases be halved or more than halved as only the fee of the European Patent Attorney would have to be paid. European Patent Attorneys (EPAs) represent ‘the largest body of technically qualified legal persons in Europe with a deep understanding of both patent law and science, EPAs and specialist patent lawyers have overlapping and in some instances identical skills’ Ref.: http://www.ipfederation.com/document_download.php?id=579

    What should Member States of the European Union do before a European Patent Court and a Community Patent Court have been established?
    As there are in the European Union only a limited number of IP lawyers with an academic degree in science and/or technology it takes quite some time for any IP lawyer without such a degree to get to understand the technical features of a patent infringement case. His co-counsel the patent attorney has to educate him or her in these technical features that will in general prove to be decisive for the outcome of patent litigation proceedings in Court. Thus nowadays clients face doubling of litigation costs as under national regimes the involvement of a lawyer is still required when a client has to enforce his patent rights or has to defend himself against an infringement suit.
    Member States should take the demands of businesses for a reform of the representation rights of patent attorneys seriously. These companies depend on the governments and parliaments of the Member States for amendment of the national patent laws as to the representation rights of patent attorneys before the national courts. As in the United Kingdom patent attorneys should have representation rights before the national Courts handling patent litigation. To be entitled to represent clients before appeal courts a litigator’s certificate should be required or equivalent training, e.g. the CEIPI – epi Diploma Course on Patent Litigation in Europe organised by the University of Strasbourg.

    In the Netherlands litigation costs (lawyer’s fee and patent attorney’s fee) in 2010 in twenty patent cases amounted to three million euro. In case a Dutch patent attorney would not need to involve an attorney-at-law anymore, the cost of litigation may be drastically decreased and in many cases even halved. Particularly for the small and medium-sized companies this would mean that they would be able to enforce their patent rights or defend against an infringement suit, which at the moment is not possible due to insufficient financial resources. In this respect I would refer to the following presentation of a German colleague of mine on the role that patent attorneys already play in patent opposition proceedings and IP litigation in Europe. http://www.cncpi.fr/fckupload/File/2008_10_10_Forum%20FICPI_Florence_session%203-5%20Rainer%20Beetz.pdf
    The Hague, 3rd January 2012 Jowi IPS Intellectual Property Services

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