Representation and Representative

Obligation of representation

EP procedure

Principle

If a party has neither domicile nor registered office in the territory of a contracting state, it is necessary for them to be represented (A133(2) EPC):

• by an appointed representative;
• a lawyer from one of the contracting states (A134(8) EPC, if they may act in their state as a representative in patent matters Guidelines A-VIII 1.4).

The nationality of the party has no impact on representation.

Otherwise, there is no obligation of representation (A133(1) EPC).

An appointed representative may sub-delegate their authority to another appointed representative (T227/92).

Time limit in case of failure to appoint a representative

The formalities officer verifies whether the conditions for appointing a representative are met (Guidelines A-III 2.1) and, in case of failure, invites the applicant to appoint a representative within 2 months (A90(4) EPC together with R58 EPC together with R57 h) EPC).

If the applicant fails to respond to this invitation, the application is refused (regarding the examination procedure, A90(5) EPC).

A122 EPC applies to the 2-month time limit.

However, it is not mandatory to file a restitutio in integrum under A122 EPC: decision J18/08 accepted that the applicant could correct their error by filing an appeal and submitting, during this appeal, the missing documents (in this case, the documents relating to representation).

Cases of joint applicants / co-proprietors / co-opponents

In cases of joint applicants / co-proprietors / co-opponents, it is sufficient for one of them to have their domicile or registered office in the territory of a contracting state to avoid this obligation.

In this case, the latter may be the common representative under A151 EPC.

Exceptions

There is no obligation of representation:

• for the filing (A133(2) EPC) including:
  • acts leading to the allocation of a filing date (e.g., late filing of documents, Guidelines A-VIII 1.1);
  • corrections of irregularities related to the filing;
  • the appeal concerning the allocation of a filing date (J7/89);
  • the submission of annexes to the filing (e.g., designation of inventor, submission of priority documents) (this is the EPO’s practice).
• to be heard in the context of an examination (T451/89);
• to pay annual official fees (Guidelines A-X 1).

Acts not performed by a normally mandatory representative

Acts performed by a non-representative, where the conditions for appointing a representative as previously set out are met, must be confirmed by the appointed representative (T213/89).

Indeed, the mere appointment of a representative does not automatically validate acts performed previously (J32/86).

However, the appointed representative may be authorized to remedy irregularities that occurred before their appointment (J32/86).

Entry into the regional phase (Euro-PCT application)

Principle

The representation requirements are the same as those mentioned above, except concerning entry into the phase where no representation is mandatory (R51bis.3.b PCT for designated Offices and R76.5 PCT together with R51bis.3.b PCT for elected Offices and Guide du déposant – Phase nationale – Chapitre national – EP, point EP.11).

Entry into the phase cannot be performed by a representative who handled the international phase but is not a valid representative before the EPO (Guide du déposant – Phase nationale – Chapitre national – EP, point EP.11).

The applicant required to be represented by a representative may not perform any act (including restitutio in integrum, Guide du déposant – Phase nationale – Chapitre national – EP, point EP.11 and A27.7 PCT together with R51bis.1.b.ii PCT for designated Offices and A27.7 PCT together with R76.5 PCT together with R51bis.1.b.ii PCT for elected Offices) from:

• the time when their application began to be processed.
• the expiration of the 31-month time limit.

Representative for the international phase – for the regional phase

A representative appointed for the international phase (pursuant to A49 PCT together with R90.1 PCT) is not automatically a representative during the European phase (Guide du déposant, §11.001).

The representative must inform the EPO of their representation upon entry into the regional phase, even if that representative acted for the applicant during the international phase (Guide du déposant – Phase nationale – Chapitre national – EP, point EP.11).

Thus, if the applicant is notified by the EPO upon entry into the phase (e.g., the notification R161(1) EPC), there are no defects in notification (R125(4) EPC).

Lack of representation

If no representative is appointed by the end of the 31-month time limit from the priority date (R159(1) EPC), the EPO invites the applicant to appoint a representative within 2 months (R163(5) EPC).

If this time limit is not observed, the application is refused (R163(6) EPC).

A121 EPC applies to the 31-month time limit and the 2-month time limit above.

Possibility of Representation

It is always possible, even if there is no obligation on the party concerned (A133(1) EPC), for the latter to be represented.

It may be represented by:

• an authorized representative (Guidelines A-VIII 1.1);
• an attorney from one of the contracting states (A134(8) EPC, if they may act in their state as a representative in patent matters Guidelines A-VIII 1.4);
• one of its employees (A133(3) EPC and Guidelines A-VIII 1.2);
  • it is not currently possible for this employee to be that of a subsidiary or a parent company, even though the EPC allows for this possibility (A133(3) EPC, in fine).

Where conflicting instructions are given by the party and its representative, they are informed thereof (Guidelines A-VIII 1.2).

An authorized representative may sub-delegate their authority to another authorized representative (T227/92).

Conflicts of Interest of Representatives

It should be noted that Article 3(2) of the Regulation on Discipline for Professional Representatives (Supplementary Publication OJ 1/2017, XIV.3) provides:

Any professional representative must recuse themselves where accepting or continuing a mandate would lead them to handle a specific case in which they have advised or represented a person having interests opposed to those of their client, unless the conflict of interest has ceased.

Therefore, a representative who changes firms must avoid finding themselves on the other side of the fence in the same case.

However, these questions of professional conduct are not within the competence of the Office (T1693/10).

Powers of Attorney

EP Procedure

Cases Requiring a Power of Attorney

In theory, a representative (i.e., professional representative, attorney, employee) must have a power of attorney to act before the EPO on behalf of a party (R152 EPC).

Below are the cases where a specific power of attorney must be filed (R152(1) EPC and « Decision of the President of the European Patent Office, dated 12 July 2007, on the filing of powers of attorney« , OJ 2007, Special Edition No. 3, L.1):

• for a professional representative:
  • in case of replacement of a former representative whose termination of representation has not been notified to the EPO, unless:
    • the former representative belongs to the same association as the new representative;
    • reference is made to a general power of attorney already recorded by the EPO;
    • the EPO is notified of the termination of the former representative’s mandate before the end of the applicable time limit.
  • if circumstances so require (e.g., in case of doubt by the EPO).
• for an attorney:
  • in all cases except:
    • if reference is made to a general power of attorney already recorded by the EPO;
    • if the filing concerns a divisional application and the power of attorney for the parent application expressly authorized the attorney to file divisional applications (Guidelines A-IV 1.6);
  • an attorney may not be part of a group of representatives (J8/10);
• for an employee of the opponent:
  • in all cases except:
    • if the employee is also a professional representative;
    • if reference is made to a general power of attorney already recorded by the EPO;
    • if the filing concerns a divisional application and the power of attorney for the parent application expressly authorized the employee to file divisional applications (Guidelines A-IV 1.6).

The power of attorney may be filed by the representative, the employee, or the party (Guidelines A-VIII 1.5).

The power of attorney must be signed by the principal (Guidelines A-VIII 1.5) or, where applicable, by the principals (Guidelines A-VIII 3.4).

General Power of Attorney

As mentioned above, a general power of attorney may be established and recorded with the EPO (« Notice from the President of the European Patent Office dated 20 December 1984 concerning general powers of attorney« , OJ 1985, 42).

This power of attorney is submitted in a single copy (R152(4) EPC).

Appointment of Multiple Representatives

It is possible to appoint multiple representatives who may act either (R152(10) EPC):

• jointly;
• individually (a clause in the power of attorney stating that this is not permitted is not binding on the EPO).

Verification of the Power of Attorney

The formalities officer must verify that the requirements relating to powers of attorney are met (Guidelines A-III 2.1).

Failure to Provide a Power of Attorney

If the power of attorney is not filed, the representative or employee is requested to remedy this deficiency within a specified time limit (Guidelines A-VIII 1.5):

• 2 months, if the party is required to appoint a representative and this deficiency is noted during the examination procedure (R152(3) EPC in conjunction with R58 EPC).

A121 EPC applies to the time limit set, for the applicant (since even if the representative must perform the act, the applicant may also do so, Guidelines A-VIII 1.5).

A122 EPC applies to the time limit set, for the proprietor (since even if the representative must perform the act, the proprietor may also do so).

Sanction for failure to provide

If the deadline is not met, acts performed by the representative (other than filing acts) shall be deemed not to have been filed (R152(6) EPC).

PCT procedure

Principle

A power of attorney is required under the same conditions as previously (« Notice from the European Patent Office dated 2 March 2010 concerning the waiver of the power of representation under R90.4.d PCT and R90.5.c PCT« , OJ 2010, 335).

Cases requiring a power of attorney (cases provided by the EPO)

A power of attorney may be requested if (« Notice from the European Patent Office dated 2 March 2010 concerning the waiver of the power of representation under R90.4.d PCT and R90.5.c PCT« , OJ 2010, 335):

• A procedural act is performed by a presumed representative who is not the one indicated in the international application, unless:
  • The presumed representative is part of the same firm as the representative indicated in the international application or
  • The presumed representative and the representative indicated in the international application are
    • employees of the applicant
    • if there are multiple applicants, of the common representative;
• It is uncertain whether the representative or the common representative is authorized to act.

A power of attorney should be requested in the case of a secondary representative (under R90.1.d PCT) if this representative is not indicated in the application.

Cases requiring a power of attorney (cases provided by the PCT)

Additionally, a power of attorney must be requested in the case of withdrawal of the international application or of a designation (R90.4.e PCT together with R90bis.1 PCT for the withdrawal of an application or R90bis.2 PCT for the withdrawal of a designation or R90bis.3 PCT for the withdrawal of a priority or R90bis.4 PCT for the withdrawal of a request for preliminary examination or of an election).

Parties acting jointly

Co-applicants

To simplify interactions with the EPO, it is required to have a common representative acting on behalf of multiple applicants.

This common representative is (R151(1) EPC):

• The person designated as such in the request for grant (R41(3) EPC);
• Failing that, the representative of the applicant first named in the request;
• Failing that, the representative of another applicant who must appoint one for the further procedure;
• Failing that, the applicant first named in the request.

However, the request for grant must be signed by all applicants or their representative. The common representative is only authorized to act on behalf of the applicants after this signature (Guidelines A-VIII 1.3).

Co-proprietors and co-opponents

The preceding paragraph on co-applicants also applies to co-proprietors and co-opponents (R151(1) EPC in fine).