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.

How the IP Bill affects Inventors

Source Wikipedia

The Intellectual Property Bill has completed its passage through Parliament and will shortly become law. Although most attention focused on HM government's proposal to criminalize registered design infringement the Bill makes a number of changes to British patent law which will affect inventors.

Overview 
This is a very short legislative instrument consisting of 24 clauses in 4 Parts and one Schedule.  Part I which consists of 14 clauses relates to registered design, registered Community design and unregistered design right law. Part 2 is concerned with patents, Part 3 with amendments to the Freedom of Information Act 2000 which will prevent premature disclosure of sensitive technical or commercial information relating to research and a new duty upon the Secretary of State for Business Innovation and Skills to deliver an annual report to Parliament on how the Intellectual Property Office and IP legislation generally have facilitated innovation and growth in the UK and Part 4 with the implementation of the Bill once it becomes law. The Schedule contains minor amendments to the Patents Act 1977.

Part 2: Provisions relating to Patents
These are as follows:

Clause	Provision
15	Infringement: marking product with internet link
16	Opinions service
17	Unified Patent Court
18	Sharing information with overseas patent offices
19	Minor amendments to the Patents Act 1977

Infringement: marking product with internet link

At present s.62 of the Patents Act 1977 protects an infringer from an award of damages or other pecuniary relief if he or she can prove that that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed. The appearance of the word "patent", "patented" or any other word or words expressing or implying that a patent had been obtained shall not suffice unless the number of the patent accompanies the word or words in question.

Clause 15 inserts the words “or a relevant internet link” after "the number of the patent" in s.62. The words "relevant internet link" are defined by a new sub-section (1A) to s.62:

"The reference in subsection (1) to a relevant internet link is a reference to an address of a posting on the internet—
(a) which is accessible to the public free of charge, and
(b) which clearly associates the product with the number of the patent.”

It is still necessary to notify the public of the number of the patent but it is no longer necessary to engrave, emboss or otherwise mark it on the product itself. That concession should make for cost savings and improve the appearance of the product concerned.

Opinions Service
S.13 of the Patents Act 1974 inserted a new s.74A and s,74B into the Patents Act 1977 which enabled the Intellectual Property Office to deliver an opinion as to whether:
(a)   a particular act constitutes, or (if done) would constitute, an infringement of a patent; or
(b)   whether, or to what extent, an invention is not patentable because it was not new or obvious.

This is a very inexpensive form of alternative dispute resolution ("ADR") for disputes over infirngement and validity which has proved to be very popular since it was introduced in 2005 (see the "Requests for Opinions" page of the IPO website).  Clause 16 (1) will give the Secretary of State power to extend this ADR service to other types of patent disputes by substituting the words “an opinion on a prescribed matter in relation to the patent” for the present paragraphs (a) and (b) of s.74 (1). 

Clause 16 (4) will give the Comptroller power to revoke a patent if he finds that it is invalid for want of novelty or obviousness.  Clause 16 (2) will limit the rule making powers of the Secretary of State in relation to reviews of decisions and and clause 16 (3) applies s.74A and s.74B to the legislation relating to supplemental protection certificates.

Unified Patent Court

Probably the most important provision of the Bill so far as inventors are concerned is clause 17 which allows the UK to implement regulations for a European patent for most of the member states of the EU including the UK (the "Unitary Patent") and an agreement for a Unified Patent Court to resolve disputes relating to such patent.  The clause inserts a new s.88A and s.88B into the Patents Act 1977. S.88A will enable the Secretary of State to make regulations relating to the Court and s.88B to designate the Court as an international organization of which the UK is a member. To understand why the Unitary Patent is important see my article "Unitary Patents: Good News from Europe" 27 Dec 2012.

Other Reforms

Clause 18 allows the IPO to share information relating to unpublished patent applications with other patent offices and clause 19 and the Schedule make minor amendments to the Patents Act 1977.  Clause 20 inserts a new research exemption into the Freedom of Information Act 2000 which could assist inventors who have disclosed information about their inventions to public authorities in support of grant applications or for some other purposes. Inventors could also be helped in the long term by the new reporting obligation under clause 21 on the activities of the IPO and the operation of IP legislation in promoting innovation and growth.

Further Information
If you want to learn more about the Bill you can attend our seminar The Intellectual Property Bill at 4-5 Gray's Inn Square between 16:00 and 18:00 on 19 May 2014. Admission is free but you have to book in advance either by calling George Scanlan on 020 7404 5252 or through this website.