Representation before the EPO · Rule 152(1) EPC, Decision of the President dated 12 July 2007 on...

Representation before the EPOand

Proceedings in respect of the European Patent Register

Legal Division / Dir. 5.2.4A. DecroixH.C. Haugg

Intellectual Property Office of Serbia Conference on 13 May 2011

Representation before the EPO

H.C. HauggDirectorLegal Division

313 May 2011

Agenda

• General principles of representation

– Compulsory representation

– Persons entitled to represent before the EPO

– Authorisations

• European Qualifying Examination (EQE)

• Disciplinary Matters

413 May 2011

Compulsory representation

Principle: No person compelled to be represented(Article 133(1) EPC)

Exception: compulsory representation for persons without residence or principle place of business in a Contracting State (Article 133(2) EPC)

– except for:• filing of the European patent application• entry into the European phase before expiry of

31-months period (Rule 159(1) EPC)• payments

513 May 2011

Two special cases of "representation"

• "Representation" of legal persons by employees(Article 133(3) EPC)

• "Representation" of multiple applicants(Article 59, Rule 151 EPC)

613 May 2011

"Representation" of legal persons by employees

Legal persons with their place of business in aContracting State may act:

• through their legal representative (e.g. CEO) or

• through an employee (Article 133(3) EPC)– Purpose: meet demands of modern economic life– NOT a case of representation– need not be a professional representative

713 May 2011

Representation of multiple applicants (1)

• EPC allows multiple applicants (Article 59 EPC)

• Unitary procedure (Article 118 EPC)

• Representation of multiple applicants (Rule 151 EPC)

distinguish:

– all applicants reside in Contracting States– one non-resident applicant among them

813 May 2011

Representation of multiple applicants (2)

If all are resident applicants, they are "represented":

• by one of them explicitly named as such, or

• if none is named: by the first named in the request (Rule 151(1) EPC)

913 May 2011

Representation of "mixed" multiple applicants

If one co-applicant non-resident : common professional representative needed

• Either representative of the applicant obliged to appoint one, or

• If both have appointed different representatives, representativeof the applicant first named (Rule 151(1) EPC)

1013 May 2011

Legal consequences if applicant not properly represented despite obligation

• Invitation to correct deficiency (Article 90(4) EPC)

• Application refused (Article 90(5) EPC)

and• - except for filing itself - any procedural steps

deemed not to have been taken (Rule 152(6) EPC)

• No automatic confirmation by mere appointment• Possibility of redress by way of further processing

(Article 121, Rule 135 EPC)

1113 May 2011

Agenda




– Authorisations



1213 May 2011

Persons entitled to represent before the EPO

• Professional representatives entered on the list (Article 134 EPC)

• Legal practitioners (Article 134(8) EPC)

• Special case: "accompanying persons"

1313 May 2011

Professional representatives

• Purpose: overview of particularly qualified representatives

• Requirements to be entered on the list

• Publication of the list

• Rights and duties of a professional representative

• The Institute of professional representatives: epi

• Deletion and amendments

1413 May 2011

Professional representatives:List entry requirements

• Article 134(2) EPC:

– Nationality of a Contracting State -exemption possibility (Article 134(7) EPC)

– Place of business or employment in a Contracting State

– European Qualifying Examination (EQE) -"Grandfather clause" (Article 134(3) EPC)

• Request & certificates (Article 134(4) EPC)

1513 May 2011

"Grandfather" clause

• Purpose safeguard business for national patent attorneys

• Requirements (Article 134(3) EPC)

– Nationality of a Contracting State

– Place of business or employment in acceding State

– Entitlement to act before national Industrial Property Office

• special professional qualification• min. five years professional experience• exemption possible

• Request within one year from accession date

1613 May 2011

Serbia "grandfathers" 2011

• Accession date:1st October 2010

• Statistics:

Total number: 24 of Serbian Prof. Reps.

62

2800

2027 24

30

4187

AL

HR

HU

MK

RORS

SI

Others

6871

3091

EQEGF

1713 May 2011

Publication of the list ofprofessional representatives

• Full name in alphabetical order

• Nationality by ISO country code

• Address

• Optional: phone/fax numbers, e-mail address

• Online database on EPO website

1813 May 2011

Example

Petosevic, Slobodan (RS) PetosevicVele Nigrinove 16A RS-11000 BEOGRAD

Tel: (0)11 2836810E-mail: [email protected]: (0)11 2836817

1913 May 2011

Rights and duties of aprofessional representative

• Right to act in all EPC-proceedings (Article 134(5) EPC)

• Right to establish a place of business (Article 134(6) EPC)

• Attorney-client evidentiary privilege(Article 134a (1)(d) EPC, Rule 153 EPC)

• Title: "European Patent Attorney"

• Compulsory membership of epi (Article 134a(2) EPC)

2013 May 2011

epi - The Institute of professional representatives before the EPO

• Professional association

• Objectives:– ensure smooth relationship with EPO– ensure professional code of conduct– cooperation with EPO in qualification and

disciplinary matters

• Compulsory membership (Article 134a(2) EPC)

• Further information on www.patentepi.com

2113 May 2011

Deletion from the list

• On request - "first alternative" (Rule 154(1) EPC)

• Ex officio - "second alternative" (Rule 154(1) EPC)

– Failure to pay annual epi subscription fee– Death or legal incapacity– No longer national of Contracting State– No longer place of business in Contracting State– As a disciplinary measure (Regulation on discipline)

• Re-entry possible on request (Rule 154(3) EPC)

• Amendments

2213 May 2011

Statistics 2011

Number total: 9.962

0

500

1000

1500

2000

2500

3000

AL

AT

BE

BG CH

CY CZ

DE

DK

EE

ES FI FR GB

GR HR

HU IE IS IT LI LT LU LV MC

MK

MT NL

NO PL

PT

RO RS

SE SI

SK

SM TR

Number EQE Number GF

Overview Professional Representatives

2313 May 2011

Legal practitioners

• May act before EPO in the same way as a professional representative (Article134(8) EPC)

• NO entry on the list of professional representatives

• Internal registration by Legal Division

2413 May 2011

Registration requirements for legal practitioners

• Fulfilment of conditions of Article 134(8) EPC

– Qualified in a Contracting State

– Place of business in that State

– Entitlement to act as a professional representative in patent matters in that State

– NO nationality requirement

• Intention to undertake representation + filing of authorisation

2513 May 2011

Legal Practitioners 2010• Statistics

Number total: 1.424

0

100

200

300

400

500

600

700

800

AT BE BG CH CY CZ DE DK ES FR GB GR HU IE IT LI LU MT NL PT SE SK

Countries

Num

bers

2613 May 2011

Example

2713 May 2011

Special case: accompanying persons(G2/94; G4/95)

• Oral submissions in oral proceedings

• Advance request necessary

• Subject-matter: facts and evidence only, no arguments

• Supervision and responsibility ofprofessional representative

• Permission and discretion of EPO

2813 May 2011

Agenda




– Authorisations



2913 May 2011

Authorisations

• Compulsory filing of an authorisation

• Kinds of authorisations:

– Specific authorisation (Form 1003)

– General authorisation (Form 1004)

– Sub-authorisation

– PCT-proceedings

– Authorisation of an association

3013 May 2011

Compulsory filing of an authorisation

Rule 152(1) EPC, Decision of the President dated 12 July 2007 on the filing of authorisations(Special Edition No. 3, OJ EPO 2007, L.1.)

• Lawyers and employees: always

• Professional representatives in two cases:

1. In case of change of representatives, if

– not members of the same association and– termination of former representation not notified to EPO

2. On request of the EPO, especially in case of doubt

3113 May 2011

Legal consequence of failureto file authorisation

• Actions deemed not to have been taken(Rule 152(6) EPC)

• Possibility of redress by further processing(Article 121, Rule 135 EPC)

3213 May 2011

Specific authorisation

• Separate document for each application/ patent necessary (incl. divisionals)

• Powers:ALL, including:

– act in all proceedings before the EPO– receive payments (refunds)

except for:

– act in PCT-proceedings– give sub-authorisation

3313 May 2011

Form 1003

3413 May 2011

General authorisation

• Authorisee can act in all patent matters (Rule 152(4) EPC)

• Powers - ALL, except for:

– receive payments

– act in PCT- proceedings

– give sub-authorisation

• Registration by Legal Division

3513 May 2011

Form 1004

3613 May 2011

Quote GA number

3713 May 2011

http://www.epo.org/patents/Grant-procedure/Filing-an-application/European-applications/forms.html

3813 May 2011

Authorisation in PCT proceedings

• International phase:- law of Receiving Office applicable(Art. 27(7), 49 PCT)

- EPO as RO: EPC applies

- EPO as ISA or IPEA: Rule 90.1(a) PCT

- Waiver of submitting a separate power of attorney(Rule 90.4(d), 90.5(c) PCT, OJ EPO 2004, 305)

except for withdrawal (Rule 90.4(e) PCT)

• Entry into European phase: explicit appointment & authorisation necessary

3913 May 2011

Sub-authorisation

• EPC provisions on authorisations apply

• Only to entitled representative (T 227/92)

• Specific / general sub-authorisation

• Termination

4013 May 2011

Authorisation of an "association"

Rule 152(11) EPC:

"An authorisation of the association shall be deemed to be authorisation of any representative who can establish that he practices within that association."

4113 May 2011

Association of representatives

• Purpose:

All members jointly appointed as representatives.

• Definition:

"An association of representatives means an association consisting either of professional representatives on the list conducting their profession in private practice or as employees in industry" (J 16/96, OJ EPO 1998, 347).

• No legal practitioners allowed!

4213 May 2011

Registration requirement

• Registration by Legal Division

• Request indicating:

– Name of the association

– Members

– Statement that all members are professional representatives

– Signature of all professional representatives

4313 May 2011

Example

4413 May 2011

Termination of the authorisation

• Representative deemed to be authorised until termination notified to EPO (Rule 152(8) EPC)

• Death of the authorisor?In principle: NO (Rule 152(9) EPC)

unless expressly provided otherwise

• Withdrawal by authorisor (Rule 152(7) EPC)

• Sub-authorisation remains valid

4513 May 2011

Agenda




– Authorisations



4613 May 2011

EQE

• Purpose: establish requisite aptitude and knowledge to represent applicants before the EPO

• Regulation on the European qualifying examination for professional representatives as of 10.12.2008

• Implementation Provisions as of 10.12.2008

• Instructions to candidates concerning the conduct of the European qualifying examination

all published in Supplement 2 to OJ EPO 3/2010

• http://www.epo.org/patents/learning/qualifying-examination/about-eqe.html

4713 May 2011

EQE - Enrolment conditions

• Qualification: University-level scientific or technical qualification or equivalent level of knowledge

• Professional activity:Fulltime training under supervision of entitled person for min. 3 years

• NEW from 2012: pass of pre-examination

4813 May 2011

EQE - The papers

• Examination held once a year

• Examination syllabus

• 4 papers

– Drafting claims– Reply to an official letter citing prior art– Drafting a notice of opposition– Legal questions

• Languages

4913 May 2011

EQE - Training

• National bodies

• CEIPI & epi

• EQE Compendium on EPO website

5013 May 2011

EQE - Training

5113 May 2011

EQE - Statistics

0

50

100

150

200

250

AT AU BE CH CN DE DK ES FI FR GB IE IN IS IT JP LU NL NZ PL RO SE

EQE 2010

• Candidates whopassed EQEin 2010 -by nationality

- Total of 597

• Percentage of Passes/Failures -since 2002

0

500

1000

1500

2000

2500

2002 2003 2004 2005 2006 2007 2008 2009 2010

Not PassedPassed

5213 May 2011

Agenda




– Authorisations



5313 May 2011

Disciplinary matters

• Rules of professional conduct

• Disciplinary proceedings

• Disciplinary measures

5413 May 2011

Legal provisions relating to the professional conduct of professional representatives

1. Regulation on discipline for professional representatives (OJ 1978, 91)

– Rules of professional conduct

– Disciplinary bodies

– Procedure

– Disciplinary measures

2. epi Code of Conduct (OJ 2003, 523)

5513 May 2011

Rules of professional conduct

Articles 1-3 Regulation on discipline:Implemented and completed by the Code of Conduct

• Article 1: General professional obligations

• Article 2: Professional secrecy

• Article 3: Special provisions of conduct towards clients

5613 May 2011

epi Code of Conduct

Governs the conduct of epi members and their activities related to the EPC

Particular discipline for:– advertisements– relation with the public– relations with clients– relationship with other members– relationship with the EPO– relationship with the epi

Breaches of the Code of Conduct should be brought to the notice of the Disciplinary Committee in writing(Art. 7(e) Code of Conduct)

5713 May 2011

Disciplinary bodies

Articles 5-7 Regulation on discipline:

• Article 5: Disciplinary Committee of epi

• Article 6: Disciplinary Board of the EPO

• Article 7: Disciplinary Board of Appeal of the EPO

5813 May 2011

Disciplinary Bodies

Disciplinary Board of Appeal

Disciplinary Board(EPO and epi)

Disciplinary Committee

(epi)

Examination Board(EPO and epi)

Art. 24(3) Regulation on the European qualifying examination forprofessional representatives

Art. 8(1) Regulation on discipline

Art. 8(1) Regulation on discipline

Art. 6(2)(c), (3)Regulation on discipline

5913 May 2011

Disciplinary measuresArticle 4 Regulation on discipline:

A professional representative who fails to comply with the Rules of professional conduct may incur one of the following penalties:

(a) a warning,(b) a reprimand,(c) a fine not exceeding DM 20.000,(d) deletion from the list of professional representatives for not

more than six months,(e) deletion from the list of professional representatives for an

indefinite period

These measures may also be incurred by failure to pay within 2 months of the due date the annual subscription of epi

Dismissal

Thank you for your attention!

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