Representation and patent attorney

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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 for it to be represented (A133 (2) EPC):

The nationality of the party has no impact on the representation.

Otherwise, there is no obligation of representation (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 agent of formality checks on the conditions of constitution of agent are fulfilled (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.

Nevertheless, it is not mandatory to submit a restitutio in integrum according to'A122 EPC : decision J18 / 08 has accepted the fact that the plaintiff corrects his error by lodging an appeal and provides, in 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 / co-owners / co-opponents, it is sufficient that one of them has its domicile or 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 obligation of representation:

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

1.1.5. Acts not performed by a normally required attorney

Acts performed by a non-authorized representative, while the conditions for appointing a representative previously stated are met, must be confirmed by the appointed proxy holder (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 phase entry where no representation is required (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).

Phase entry can not be made by an agent who has processed the international phase, but is not a valid representative before the EPO (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.
  • the expiry of the 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 the representative represented the applicant during the international phase (Applicant's Guide - National Phase - National Chapter - EP, point EP.11).

Thus, if the applicant is notified by the EPO when entering the R161 (1) EPC), there are no notification defects (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 Rules on the Discipline of Professional Representatives (Supplementary publication OJ 1/2017, XIV.3) provides:

A professional representative shall recuse himself when the acceptance of a mandate or its continuation would lead him to know of a case in which he advised or represented a person having interests opposed to those of his principal, unless that the conflict of interest has ceased.

Therefore, a proxy who changes cabinet must avoid being on the other side of the fence, in the same case.

However, these ethical issues are not within the purview 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 power to act before the EPO on behalf of a party (R152 EPC).

Here are the cases where the particular power must be deposited (R152 (1) EPC and Decision 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 termination has not been notified to the EPO, unless:
      • the former representative belongs to the same group as the new representative
      • reference is made to a general power already registered with the EPO;
      • the EPO is notified of the termination of the mandate of the former representative before the end of the prescribed period.
    • if circumstances so require (eg in case of doubt of the EPO).
  • for a lawyer :
    • in all cases except
      • if reference is made to a general power of attorney already registered with the EPO;
      • if the application concerns a divisional and the power of the parent application specifically authorized the lawyer to file divisionalDirectives A-IV 1.6);
    • a lawyer can not be in a group of agents (D8 / 10);
  • for a employee of the opponent :
    • in all cases except:
      • if he is also a professional representative;
      • if reference is made to a general power of attorney 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 mentioned above, a general power of attorney can be established and registered with the EPO (" Notice from the President of the European Patent Office dated 20 December 1984 concerning 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 stating that this is not possible is unenforceable against the EPO).

4.1.4. Verification of power

The formalities officer must verify that the requirements relating to the powers are fulfilled (Directives A-III 2.1).

4.1.5. Failure to supply

If the power is not deposited, the agent or the employee is requested to remedy the irregularity within a specified time (Directives A-VIII 1.5):

  • 2 monthsif the party has the obligation to appoint a representative and this irregularity is noted in the examination procedure (R152 (3) EPC together R58 EPC).

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

TheA122 EPC is applicable to the time allowed, for the holder (because even if the agent must perform the act, the holder can also achieve).

4.1.6. Sanction of non-supply

If the deadline is not filed in time, the acts performed by the agent (excluding deeds of deposit) are deemed null and void (R152 (6) EPC).

Section 4.2. PCT procedure

4.2.1. Principle

Power is required under the same conditions as before (" Notice from the European Patent Office dated 2 March 2010 concerning the waiver of the power of representation provided for in R90.4.d PCT and at the R90.5.c PCT », OY 2010, 335).

4.2.2. Power requirement case (cases provided by the EPO)

Power may be requested if (" Notice from the European Patent Office dated 2 March 2010 concerning the waiver of the power of representation provided for in R90.4.d PCT and at the R90.5.c PCT », OY 2010, 335):

  • a pleading is performed by an alleged agent other than the one 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
      • if there are several applicants, the common representative;
  • it is not certain that the agent or the common representative is entitled to act.

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

4.2.3. Power requirement case (PCT cases)

In addition, a power of attorney must be sought in case of withdrawal of the international application or 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. "In the case of co-plaintiffs / co-defendants / co-opponents, it is sufficient for one of them to have his domicile or registered office in the territory of a Contracting State in order not to be subject to this obligation [d 'to be represented] ".

    I do not agree.
    If one of the co-applicants is not domiciled or has a 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 "... if one of the applicants is under the obligation to appoint a professional representative ..."

  2. Hello,

    Can the A121 really be applied for the 2 month period to appoint an agent? It seems to me that the R135 excludes this delay. The solution proposed by the J18 / 08 was to appeal.

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