Legal Aid for Proceedings in the Unified Patent Court

 

Jane Lambert

Art 71 (1) of the Unified Patent Court Agreement enables natural persons who are unable to meet the costs of proceedings in the Unified Patent Court, either wholly or in part, to apply for legal aid at any time. The same paragraph continues that the conditions for granting legal aid are laid down in the Rules of Procedure.

 I first discussed this topic in Legal Aid for the UPC on 25 Jan 2016.  That was long before the adoption of the Rules of Procedure and references to "the Rules" in my article were references to the 18th draft which was published on 19 Oct 2015.  The main difference between the adopted Rules and the 18th draft is that rule 377 (1) of the draft restricted eligibility for legal aid to natural persons who are citizens of the European Union or a third country national residing lawfully in a Member State of the European Union.  I am glad to say that that qualification has been removed.  Rule 377 (1) of the Rules now provides:

"The applicant shall be entitled to apply for legal aid where: 

(a) owing to his economic situation, he is wholly or partly unable to meet the costs referred to in Rule 376; and 

(b) the action in respect of which the application for legal aid is made has a reasonable prospect of success, considering the applicant’s procedural position; and 

(c) the claimant applying for legal aid is entitled to bring actions under Article 47 of the Agreement."

It would appear that nations or residents of any state can apply for legal aid so long as they meet the other requirements of the Rules. 

As legal aid for intellectual property work in England and Wales was abolished by s.6 (6) and para 1 (1) (h) of Sched. 2 to the Access to Justice Act 1999, the availability of legal aid in the Unified Patent Court could attract many academics. research students and other individual inventors in the UK.  As the UPC will interpret and apply the European Patent Convention which is also the basis of English and Welsh, Scottish and Northern Irish patent law it could resolve many disputes that would otherwise have been decided in the Patents Court or Intellectual Property Enterprise Court.

The Rules governing legal aid are Rules 377 to 382 and they are essentially the same as in the 18th draft. Readers can refer to my previous article for the purpose of the Rules, the costs that are covered, the payment of costs to successful unassisted parties, eligibility applications, withdrawal of legal aid and the recovery of legal aid payments.  There is also a holding page on legal aid on the UPC's website.

British inventors cannot be represented before the UPC by British counsel and solicitors because art 48 of the UPC Agreement requires parties to be represented either by lawyers authorized to practise before a court of a contracting member state or European patent attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to art 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate.  Nevertheless, it is worth mentioning that James Bridgeman SC of the Irish bar is an ad eundem member of my chambers' IP team. He has considerable experience in IP law as he practised as a trade mark attorney before he became a barrister.  Although the Irish Republic has not yet ratified the UPC agreement it is a contracting member state.   There is no reason why IP practitioners from these or other chambers could not assist Mr Bridgenman or other advocates in appropriate circumstances.  

Anybody wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.

Legal Aid for the UPC

Before it was excluded from public funding by s.6 (6) and para 1 (1) (h) of Sched. 2 to the Access to Justice Act 1999, legal aid was available for intellectual property matters. It is my experience as an advisor to start-ups and other small businesses that those provisions have inhibited enterprise and innovation in the United Kingdom. That is because litigation in the adversarial system is considerably more expensive than in the inquisitorial one (see the table on page 50 of "The Enforcement of Patent Rights" by the Intellectual Property Advisory Committee). Moreover in the UK unlike the USA where costs are similar the losing party usually has to bear the winning party's costs.

That may change. Art 71 (1) of the Agreement on a Unified Patent Court of 19 Feb 2013 ("the UPC Agreement") provides:

"A party who is a natural person and who is unable to meet the costs of the proceedings, either wholly or in part, may at any time apply for legal aid. The conditions for granting of legal aid shall be laid down in the Rules of Procedure."

The draft Rules of Procedure that have been prepared by representatives of states that have signed the UPC Agreement amplify and apply that article.

Rule 375 (1) of the draft Rules enables the UPC to grant legal aid in order to achieve effective access to justice. Paragraph (2) adds that such  aid may be granted in respect of any proceedings before the court. Subject to the level set by the Administrative Committee (one of three committees established by art 11 of the UPC Agreement to ensure the effective implementation and operation of that agreement) under art 71 (3), the following costs may be covered by virtue of rule 376 (1):

"(a) court fees;
(b) costs of legal assistance and representation regarding:

(i) pre-litigation advice with a view to reaching a settlement prior to commencing legal proceedings;
(ii) commencing and maintaining proceedings before the Court;
(iii) all costs relating to proceedings including the application for legal aid;
(iv) enforcement of decisions; 

(c) other necessary costs related to the proceedings to be borne by a party, including costs of witnesses, experts, interpreters and translators and necessary travel, accommodation and subsistence costs of the applicant and his representative."

Also, and again that is subject to the level set by the Administrative Committee, rule 376 (2) provides that legal aid may also cover the costs awarded to the successful party if the applicant loses the action. That was never possible under the Legal Aid Act 1988 and it would avoid many of the difficulties that arose under that statute. Rule 376A (1) limits the maximum amount to be paid for representation pursuant to rule 376.1(b) to the maximum amount of recoverable costs under art 69(1) of the UPC Agreement and rule 152.2. The Administrative Council may set a lower level after taking into account necessary costs for legal representation and the need to guarantee adequate access to justice.

Legal aid will be confined by rule 377 (1) to natural persons who are EU citizens or citizens of other states lawfully resident in the EU and who meet the following conditions:

(a)  they are wholly or partly unable to meet the costs referred to above owing to their economic condition; and
(b) the action in respect of which the application for legal aid is made has a reasonable prospect of success, considering the applicant’s procedural position; and
(c) the person applying for legal aid is the patentee, an exclusive licensee or otherwise entitled to bring an action under art 47 of the UPC Agreement.

The Administrative Committee may set thresholds under rule 377 (2) above which applicants shall be deemed to be wholly or partly able to pay the costs. That shall not however prevent their proving otherwise by reason of the high cost of living in their member state of domicile or habitual residence. All relevant circumstances are to be taken into account under rule 377 (3) including the importance of the action to the applicant and also the nature of the action when the application concerns a claim arising directly out of the applicant’s trade or self-employed profession.

Rule 378 prescribes the way in which applications for legal aid are to be made and rule 378A the evidence to be adduced in support.  Rule 379 sets out the process by which the application is to be assessed and a decision taken.  Assisted parties are required by rule 379A promptly to report changes of circumstances. Legal aid may be withdrawn under rule 380 subject to a right of appeal which is provided by rule 381.  Costs awarded against an unsuccessful unassisted party can be recovered under rule 382 (1). An assisted party may also be required to pay back any moneys paid to him if his legal aid is withdrawn by virtue of art 382 (2).

I shall mention the availability of legal aid in my talk on the UPC and the unitary patent in chambers on 4 Feb 2016 which I mentioned in Preparing for the Unified Patent Court 23 Jan 2016 NIPC Law. If you would like to attend that talk please call Steve Newbery on 020 7404 5252 or email clerks@4-5.co.uk.

Further Reading

Date	Author	Title	Source
	Preparatory Committee	An Enhanced European Patent System	UPC website
23 Jan 2016	Jane Lambert	Preparing for the Unified Patent Court	NIPC Law
26 Jan 2016	Jane Lambert	Preparing for the Unified Patent Court	IP North West