Our indefatigable Kluwer News Blogger has obviously not failed to realize that another draft of the Rules of Procedure has just appeared on the UPC website. To confuse everybody, this draft is still called the 18th draft and seems to date from 19 October 2015. Yet if you go through the Status history, you will find that this draft includes amendments made by the Preparatory Committee on 15 March 2017.

I do not know whether somebody on the UPC Preparatory Committee reads this blog, but in any case, I would very much appreciate if somebody could enlighten me in regard to a question that I think will be very relevant for everybody entrusted with the task of actually filing an opt-out application.

My simple question is: Do I need to file a mandate by each proprietor/applicant/holder, for an opt-out to be valid? Or can I risk not filing a mandate if I am either a representative according to Art. 48 UPC Agreement or a European Patent Attorney who has represented and is still representing the application/patent before the EPO under Art. 134 EPC and is entitled to file applications to opt-out under Rule 3(4), 2nd sentence RoP? Finally, how about in-house representatives?

The beta test site helpfully provided by the UPC on its website seems to require applicants to file a mandate in each and every case. It is stated there:

Application to Opt-out a patent
The person lodging this Application on behalf of each proprietor/applicant/holder must declare that he is authorised to lodge this Application pursuant to the mandate which must be attached to the Application and that each proprietor/applicant is the person entitled to be registered pursuant to Rule 8.5.
It is possible to download a template for the mandate. Download the template for the mandate

So far, so good. But where is the legal basis for the requirement to attach a mandate? Let us look into Rule 5(3) of the new Rules of Procedure:

rule 3-3

The only reference to a “mandate” in the Rules of Procedure (save for Rule 101, which relates to something completely different) is sub lit (b)(ii) of the Rule reproduced above. But I am afraid to say that I do not really understand this rule from a grammatical point of view, maybe because I am not an English native speaker. Specifically, I wonder whether the mandate is a requirement that applies to each and every application to opt-out under lit (b), or whether a mandate is only required if the Application to opt-out is NOT filed by the representative appointed by the applicant or proprietor, but instead by “any other person” sub lit (b)(ii)?

If a mandate is required in all cases, why is this not clearly stated as a separate requirement on the same level as (a) the name of the proprietor/applicant and (c) the details of the patent? Why is the mandate only mentioned in the indented subparagraph (ii) after “any other person”, but not also after “representative”? Or at least, why has the mandate not been listed as the first requirement of lit (b) before the names and addresses of the representatives or any other persons filing the application?

Conversely, lit (b) could also be read so as to mean “the name and address [of (i) or (ii)] and the mandate”. This reading would be consistent with the statement on the beta test website.

The troubling point is that both interpretations may make some sort of sense, although it would seem more sensible to me if the registered EPO representative could file an Application to opt-out without a separate mandate from the applicant(s)/proprietor(s). One should indeed assume, as a rule, that the Representative’s powers extend to the right to file an Application to opt-out and that any additional formal requirements add burden and costs to the applicants/proprietors.

I also worry about in-house representatives. Are they deemed to be “any other person” acting “on behalf of the proprietor or applicant” who needs to file a mandate? Or are they considered as “the proprietor or the applicant” who may directly act before the UPC and do not need to separately enter their names and postal address again and file a mandate sub lit b)?

It seems that some work should still be done on further clarifying the Rules and also in bringing the IT into conformity therewith. Right now, it is possible (I tried it out myself) to opt-out a patent both with and without filing a mandate. At least the status of both of my test patents was “opt-out” after completion of the procedure.

But to what extent can the public rely on the correctness of the opt-out register? Rule 5(6) explains:

rule 5-6

So, this seems to suggest that whatever the electronic status of the register is, an Application to opt-out will only be effective if it meets the requirements laid down in Rule 5. Thus, we should indeed know exactly what these requirements are. Hence my question.

Dear Preparatory Committee, please help and clarify Rule 5(3) RoP and your software. If the filing of a mandate is indeed mandatory, I would suggest that the IT should issue an error message or warning if no mandate has been attached to the Application.

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5 comments

  1. Independently of the question of Mr Bausch, another point should be clarified:

    When looking at Art 48.2UPCA, parties may be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to Article 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate.

    As the opt-out is for the UPC, should it not be exclusively a representative qualified before the UPC who can file an opt-out, and not just a representative under Art 134EPC? At least a “mere” representative under Art 134EPC does not appear to be allowed to represent a party before the UPC, hence also not for registering an opt-out.

    If the request is not filed by a qualified representative, the opt-out might not be registered with all ensuing consequences.

    1. In my view, Rule 5(4) answers this question. European Patent Attorneys are allowed to file the application to opt out without being registered before the UPC under Art. 48 UPCA:

      4. Rule 8 shall not apply to Applications to opt out and to Applications to withdraw made
      pursuant to this Rule 5. Where a representative is appointed, such a representative may include
      professional representatives and legal practitioners as defined in Article 134 EPC in addition to
      those referred to in Article 48 of the Agreement.

  2. Dear Thorsten,

    I think the rule is not that unclear. A company cannot sign a mandate; only a natural person can do that. Therefore, a company official who is authorized to represent the company according to the corporate law of the country where the company is established – for instance the CEO – doesn’t need a mandate himself, but he can sign a mandate to someone else. If that CEO files the opt-out himself, he doesn’t need to submit a mandate, because there is no further company official that could sign it.

    If someone else files the opt-out on behalf of the company, be it an in-house patent attorney or counsel or an external advisor, they need to submit a mandate sigend by an official who is authorized to represent the company.

    My understanding is that Rule 5.3 (b)(i) would be the exception: a representative as meant in Article 48 UPCA does not have to submit a mandate. Those representatives are lawyers admitted to the bar in a Contracting Member State and European Patent Attorneys that hold a European Patent Litigation Certificate. In most countries, such representatives also don’t need to show a mandate when they do litigation in Court.

    This is what I also wrote in my blogpost on Tuesday. However, it would indeed be useful if the Preparatory Committee would confirm this, as the validity of an opt-out is only checked by the Court when an action is started at the UPC in spite of the opt-out.

    Wouter Pors

    1. Dear Wouter,

      Thank you for your comment. As regards representatives, do I understand your response/reasoning correctly that representatives under Art. 48 UPCA would
      not

      need to submit a mandate, but simple European Patent Attorneys who are “only” representatives under Art. 134 EPC would need one? If so, this distinction would not make a lot of sense to me, particularly when considering that professional representatives before the EPO are explicitly designated as “representatives” authorized to file the application to opt out (Rule 5(4)).

      Anyway, we are in full agreement that the Preparatory Committee should better clarify the situation before the show begins.

      As regards in-house counsels, I understand your reasoning and share your view, but note that the EPC does not require companies having their residence or place of business in the EPC member states to be represented at all. Therefore, companies are often represented in EPO proceedings by authorized employees (Art 133(3) EPC). Why should such authorized employees not also be entitled to file the application to opt out? And why should they need to file a mandate, given their closeness to the company, whereas the UPCA representative does not have to?

      Kind regards,
      Thorsten

  3. I should not have overlooked R5(4)UPC, which makes clear that a qualified representative under Art 134 can file an opt-out, provided he files at the same time a power of attorney.

    Why should it not be possible to consider that the power of attorney valid up to grant before the EPO should not be valid when filing an opt-out?

    This could include qualified representatives under Art 134EPC, but also representatives qualified under Art 133EPC. This would simplify the procedure and take care of the legitimate question raised by Mr Bausch’s in his reply to Mr Pors.

    Another possibility to initiate an opt-out would have been to accept that a validation in at least one member state of the EU, and for obvious reasons, not just a member state of the UPC, is equivalent to an opt-out.

    We were always told that the UPC would simplify life for IP actors. I beg to disagree, for this reason alone.

    In a comment published on IPKat, it was stated that the UPC is a lawyer-led white elephant. How true when I see Mr Pors’ reply.

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