Representation and patent attorney

See the latest changes

Chapter 1. Duty to Represent

Section 1.1. EP procedure

1.1.1. Principle

If a party has neither domicile nor registered office in the territory of a Contracting State, it is necessary that he / she represents himself (#8217;A133 (2) EPC):

The nationality of the party has no impact on representation.

Otherwise, there is no representation obligation (#8217;A133 (1) EPC).

A professional representative may sub-delegate his authority to another professional representative (T227 / 92).

1.1.2. Time limit in case of non-appointment

The formality officer verifies that the conditions for appointing a representative have been met (Directives A-III 2.1) and, in the event of failure to comply, invite the applicant to appoint a representative under 2 months (A90 (4) EPC together R58 EPC together R57 h) CBE).

If the applicant does not respond to this invitation, the request is rejected (concerning the examination procedure, A90 (5) EPC).

TheA122 EPC is applicable to the period of 2 months.

However, it is not compulsory to present a restitutio in integrum according to'A122 EPC : decision J18 / 08 accepted the fact that the plaintiff corrected his error by appealing and provided, during this appeal, the missing documents (in this case, the documents relating to representation).

1.1.3. Co-Applicants / Co-Opponents / Co-Opponents

In the case of co-applicants / joint holders / co-opponents, it is sufficient that one of them has their domicile or their registered office in the territory of a Contracting State in order not to fall under this obligation.

In this case, the latter may be the common representative within the meaning of the A151 EPC.

1.1.4. exceptions

There is no representation obligation:

  • for the deposit (A133 (2) EPC) including :
    • acts leading to the allocation of a filing date (e.g. late filing of documents, Directives A-VIII 1.1)
    • corrections of #8217; irregularities related to the filing;
    • the appeal concerning the attribution of #8217; a filing date (D7 / 89);
    • the submission of supporting documents to the filing (e.g. designation of & #8217; inventor, provision of priority documents) (this is the practice of & #8217; EPO).
  • to be heard in connection with an instruction (T451 / 89);
  • to pay the annual fees (AX 1 Guidelines).

1.1.5. Acts not performed by a normally required attorney

Acts carried out by a non-authorized representative, when the conditions of incorporation of a representative previously stated are fulfilled, must be confirmed by the authorized representative (T213 / 89).

Indeed, the simple constitution of proxy does not automatically validate the acts performed previously (J32 / 86).

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

Section 1.2. Entry into regional phase (Euro-PCT application)

1.2.1. Principle

The representation requirements are the same as those mentioned above, except for the entry into phase where no representation is compulsory (#8217;R51bis.3.b PCT for designated Offices and R76.5 PCT together R51bis.3.b PCT for elected Offices and Applicant's Guide - National Phase - National Chapter - EP, point EP.11).

Entry into phase cannot be carried out by a representative who has processed the international phase, but is not a valid representative before the EPO (#8217;Applicant's Guide - National Phase - National Chapter - EP, point EP.11).

The plaintiff to be represented by an agent can not do anything (even a restitutio in integrum, Applicant's Guide - National Phase - National Chapter - EP, point EP.11 and A27.7 PCT together R51bis.1.b.ii PCT for designated Offices and A27.7 PCT together R76.5 PCT together R51bis.1.b.ii PCT for elected offices) from:

  • the moment his application began to be processed.
  • from the expiration of the period of 31 months.

1.2.2. Agent for the international phase - for the regional phase

An agent appointed for the international phase (under A49 PCT together R90.1 PCT) is not automatically an agent during the European phase (Guide for the applicant, §11.001).

The representative must inform the EPO of his representation when entering the regional phase, even if this representative represented the applicant during the international phase (Applicant's Guide - National Phase - National Chapter - EP, point EP.11).

Thus, if the depositor is notified by the & #8217; EPO during the & #8217; entry into phase (e.g. notification R161 (1) EPC), there are no notification flaws (R125 (4) EPC).

1.2.3. Lack of representation

If no representative is appointed at the end of the 31 months from the priority date (R159 (1) EPC), the EPO invites the applicant to appoint a representative in the 2 months (R163 (5) EPC).

If this deadline is not respected, the request is rejected (R163 (6) EPC).

TheA121 EPC is applicable to the period of 31 months and the delay 2 months above.

Chapter 2. Possibility of representation

It is always possible, even if no obligation rests on the part under consideration (A133 (1) EPC), that the latter be represented.

She can be represented by:

When contradictory instructions are given by the party and his representative, they are informed (Directives A-VIII 1.2).

A professional representative may sub-delegate his authority to another professional representative (T227 / 92).

Chapter 3. Conflicts of interest of agents

It should be noted that Article 3 (2) of the Regulation on the discipline of professional representatives (Supplementary publication OJ 1/2017, XIV.3) provides:

Any professional representative must recuse himself when the acceptance of a mandate or its continuation would lead him to know of a case of the kind concerning which he advised or represented a person having interests opposed to those of his principal, unless that the conflict of interest has not ended.

Consequently, an agent who changes cabinet must avoid finding himself on the other side of the barrier, in the same case.

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

Chapter 4. Powers

Section 4.1. EP procedure

4.1.1. Supply case

In theory, an agent (ie professional representative, lawyer, employee) must have a power to act before the EPO on behalf of a party (#8217;R152 EPC).

Here are the cases where the particular power must be deposited (R152 (1) EPC andDecision of the President of the European Patent Office dated 12 July 2007 concerning the deposit of powers” , OG 2007, Special Edition No. 3, L.1):

  • for a professional representative :
    • in the case of the replacement of a former representative whose term of office has not been notified to the EPO, unless:
      • l & #8217; old representative is part of the same grouping as the new representative
      • reference is made to a general power already registered with EPO;
      • EPO is notified of the termination of the mandate of the former representative before the end of the prescribed period.
    • if circumstances dictate (eg in case of doubt of EPO).
  • for a lawyer :
    • in all cases except
      • s & #8217; reference is made to a general power already registered with the EPO;
      • if the request concerns a divisional and the power of the mother request expressly authorized the lawyer to file the divisional (Directives A-IV 1.6);
    • a lawyer can not be in a group of agents (D8 / 10);
  • for a employee of the Opposition :
    • in all cases except:
      • s & #8217; he is also a professional representative;
      • s & #8217; reference is made to a general power already registered with the EPO;
      • if the application concerns a divisional and the power of the parent application expressly authorized the employee to file divisionals (Directives A-IV 1.6).

This power may be deposited by the agent, the employee or the party (Directives A-VIII 1.5).

Power must be signed by the principal (Directives A-VIII 1.5) or by the constituents where appropriate (Guidelines A-VIII 3.4).

4.1.2. General power

As indicated above, a general power of attorney can be established and registered with the & #8217; EPO (& #8220;Communiqué from the President of #8217; European Patent Office dated 20 December 1984 relating to general powers” , OJ 1985, 42).

This power is handed in a single copy (R152 (4) EPC).

4.1.3. Constitution of several agents

It is possible to set up several representatives who can act either (R152 (10) EPC):

  • in common ;
  • only (a clause in the power indicating that this is not possible is unenforceable against the 1 EP38217; EPO).

4.1.4. Verification of power

The formalities officer must verify that the credentials requirements are met (Directives A-III 2.1).

4.1.5. Failure to supply

If the proxy is not filed, the attorney or the employee is asked to remedy this irregularity within a given period (Directives A-VIII 1.5):

  • 2 months, if the party to #8217; obligation to appoint an agent and this irregularity is noted in examination procedure (#8217;R152 (3) EPC together R58 EPC).

TheA121 EPC is applicable to the time limit, for the applicant (because even if the agent must perform the act, the applicant can also perform it, Directives A-VIII 1.5).

TheA122 EPC is applicable to the time limit, for the holder (because even if the agent must perform the act, the holder can also carry it out).

4.1.6. Sanction of non-supply

If the period n & #8217; is not filed within the time limits, the acts performed by the agent (excluding deposit acts) are deemed to have been effected (R152 (6) EPC).

Section 4.2. PCT procedure

4.2.1. Principle

A power of attorney is required under the same conditions as above (& #8220;Communiqué from the European Patent Office, dated March 2, 2010, concerning the waiver of the power of representation provided for in the R90.4.d PCT and at the R90.5.c PCT” , OY 2010, 335).

4.2.2. Case of & #8217; requirement of & #8217; a power (cases provided for by & #8217; EPO)

A proxy can be requested if (& #8220;Communiqué from the European Patent Office, dated March 2, 2010, concerning the waiver of the power of representation provided for in the R90.4.d PCT and at the R90.5.c PCT” , OY 2010, 335):

  • a procedural document is taken by an alleged representative who is not that indicated in the international application, unless:
    • the presumed attorney is not part of the same firm as the representative indicated in the international application or
    • the presumed agent and the agent indicated in the international application are
      • depositor's employees
      • s & #8217; there are several applicants, from the common representative;
  • it is not certain that the representative or the common representative is empowered to act.

Power should be sought in the case of a secondary representative (under R90.1.d PCT) if this agent is not indicated in the request.

4.2.3. Cases of #8217; requirement of a power (cases provided for by the PCT)

In addition, a power of attorney must be requested in the event of withdrawal of the international application or of a designation (R90.4.e PCT together R90bis.1 PCT for 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 a preliminary examination or an election).

Chapter 5. Persons acting jointly

Section 5.1. Co-applicants

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

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

  • the person designated as such in the request for grant (R41 (3) EPC);
  • failing this, the representative of the applicant first named in the request;
  • failing this, the agent of another applicant who must constitute one for the continuation of the procedure;
  • failing that, the applicant first mentioned in the request.

Nevertheless, the request for grant must be signed by all applicants or their representative. The common representative may act on behalf of the applicants only after such signature (Directives A-VIII 1.3).

Section 5.2. Co-owners and co-opponents

The previous paragraph on co-applicants is also applicable to co-owners and co-opponents (R151 (1) EPC in fine).

3 Comments:

  1. & #8220; In the case of co-applicants / joint holders / co-opponents, it is sufficient that one of them has his domicile or registered office in the territory of a Contracting State in order not to fall under this obligation [ d & #8217; be represented] & #8221 ;.

    I do not agree.
    If one of the co-applicants does not have his domicile or seat in a Contracting State, it seems to me that he must be represented (A133 (2)).

    R.151 (1) goes in this direction by mentioning & #8220; & #8230; if one of the applicants is subject to & #8217; obligation to appoint a professional representative & #8230; & #8221;

  2. Hello,

    L & #8217; A121 can it really be applied for the period of 2 months to constitute an agent? It seems to me that the R135 excludes this delay. The solution proposed by the J18 / 08 was to appeal.

Leave a Reply

Your e-mail address will not be published. Required fields are marked *