Professional representation before the EPO
Although anyone may file European patent applications, regardless of residence or nationality, in some cases an applicant must be represented by a representative. This requires an authorization by the applicant. In the case of applications filed through the Patent Cooperation Treaty (PCT), some special provisions apply.
When is representation necessary
If the applicant has neither his residence nor his place of business in an EPC contracting state, then he must be represented for all acts (Art. 133(2) EPC) except for filing of the application (Art. 58 and 133(2) EPC). Note that an Extension State is not a contracting state. "Filing" means all acts that lead to a filing date (Guidelines A-IX 1.1) and covers anything that is filed in the same envelope as the application.
Joint applicants, proprietors, opponents and interventionists must be represented regardless of their residency or place of business (Art. 133(4), Rule 100(1) EPC, Guidelines A-IX 1.3). For joint opponents or appelants it has to be clear throughout the procedure who belongs to the group (G 3/99).
When is representation not necessary
An applicant who has his residence or a place of business in an EPC contracting state does not need to be represented (Art. 133(1) EPC).
For making payments, representation is never necessary, as payments can be made by anyone (Legal Advice 6/91).
Authorizations may be filed by an applicant who is obliged to be represented, since the filing of an authorization is not a procedural step (Guidelines A-IX 1.6).
Who may represent others before the EPO
Professional representatives
Representation may only be undertaken by professional representatives on the list maintained to this purpose by the EPO (Art. 134(1) EPC).
Legal practitioners
A legal practitioner may also undertake professional representation (Art. 134(7) EPC) if he
- is qualified in one of the Contracting States,
- has his place of business within such State, and
- is entitled, within the said State, to act as a professional representative in patent matters.
The legal practitioner must always file an authorization (Rule 101(1) EPC, OJ 1991,489).
Employees
If the applicant has his residence or place of business in a contracting state, he may be represented by an employee (Art. 133(3) EPC). The employee must work for the applicant and not for an economically connected company (T298/97). The employee must always file an authorization (Rule 101(1) EPC, OJ 1991,489).
Authorization
A representative can only act if authorized. The represented party may also act directly before the EPO, even if he is represented by an employee or a professional representative. When conflicting instructions are received from the party and his representative, each should be advised of the other's action (Guidelines A-IX 1.2).
Filing of the authorization
The authorization must be filed with the EPO on request (Rule 101(1) EPC) within a time limit set by the EPO. A professional representative normally does not need to file an authorization. Legal practitioners and employees must always file an authorization (Rule 101(1) EPC, OJ 1991,489).
Authorizations may be filed by an applicant who is obliged to be represented, since the filing of an authorization is not a procedural step (Guidelines A-IX 1.6).
Types of authorization
Specific authorizations
A specific authorization allows the representative to act before the EPO in respect of one particular patent application. Such an authorization must explicitly cover acts relating to divisionals otherwise a new authorization is necessary before the representative can file and prosecute the divisional (Guidelines A-IV 1.6).
General authorization
A general authorization enables a representative to act in respect of all the patent transactions of the party making the authorization (Rule 101(2) EPC). A single copy is sufficient. The general authorization must explicitly authorize to act in the international phase (PCT), to receive payment and to grant sub-authorizations (Rule 101(3)(b), OJ 1985, 42) otherwise the representative is not authorized to perform these actions. A general withdrawal of an authorization can also be filed (Rule 101(5) EPC).
When several parties issue an authorization, a general authorization is possible for one or more of them. If one cancels the general authorization, it is still valid for the rest (OJ 1986, 327).
Authorization of a group of representatives
The authorization of an association of representatives shall be deemed to be authorization of any representative who can establish that he practises within that association (Rule 101(9) EPC).
Effect of authorization
If a representative has been appointed, notifications are sent to him (Art. 119, Rule 81(1) EPC). If there are multiple representatives for one party, notification is sent to one of them (Rule 81(2) EPC), namely the common representative of Rule 100(1) EPC if there is one, (Rule 81(3) EPC, Guidelines E-I 2.4).
Termination of the authorization
Any representative who has ceased to be authorised shall continue to be regarded as the representative until the termination of his authorization has been communicated to the European Patent Office (Rule 101(6) EPC).
Unlesss the authorization states otherwise, it shall not terminate vis-à-vis the European Patent Office upon the death of the person who gave it (Rule 101(7) EPC).
Lack of authorization
If the 'representative' is not authorized, any procedural steps taken by him (other than the filing of a European patent application) shall be deemed not to have been taken (Rule 101(4) EPC). The only remedy is restitutio (Art. 122 EPC), no further processing as there is no direct loss of the application.
If the procedural step is a filing of an opposition, the opposition is deemed not received. A notice of opposition must be signed by opponent or representative, otherwise it is deemed not received (Art. 99(1), Rule 61a and 36(3) EPC).
If an applicant obliged to be represented files without appointing a representative, the Receiving Section invites him to appoint one (Art. 91(1)(a), Rule 41(1) EPC). No appointment leads to refusal of the application (Art. 91(3) EPC).
Representation under the PCT
Who may represent
A person who has the right to practice before the national office that is used as the receiving Office is automatically entitled to act before the IB, ISA and IPEA in respect of that application (Art. 49 PCT). If the IB is receiving Office, anyone with the right to practice before the national office (including the EPO) of which any of the applicants is a resident or national, may act before the IB as receiving Office (R.83.1bis(a) PCT) and then also before the ISA and IPEA (R.83.1bis(b) PCT).
Appointment of agent under PCT
Anyone who qualifies under Art. 49 PCT may be appointed as agent (R.90.1(a) PCT). The IB, ISA and IPEA may request proof of such qualification (R.83.1 PCT). Authorization must always be filed (R.90.4 PCT). If the authorization also explicitly covers proceedings in the regional phase before the EPO, it is not necessary to file a separate authorization upon entry in the regional phase (A-IX 1.5).
A person who has the right to practice before the national office that is used as ISA can be appointed specifically to represent the applicant before the ISA (R.90.1(b) PCT).
A person who has the right to practice before the national office that is used as IPEA can be appointed specifically to represent the applicant before the IPEA (R.90.1(c) PCT).
Appointment can be done only by the applicant or the agent who was appointed by the applicant under R.90.1(a) PCT (R.90.1(d) PCT). Such a sub-agent may not appoint sub-sub-agents.
Representation for Euro-PCT
Under Art. 27(7), R.51bis.1(b)(i) PCT a receiving office or, once national processing has started, a designated office may apply its national law to determine whether representation is required. Per R.76.5 PCT, this also goes for elected offices.
The EPO requires representation in accordance with Art. 133 EPC (Euro-PCT 302-304). An applicant having neither his residence nor his place of business in an EPC contracting state thus must be represented for all acts in the regional phase before the EPO (Art. 133(2) EPC).
However, an applicant who qualifies under Art. 133(2) EPC may himself initiate the regional phase if done before the end of the 31st month (Rule 107 EPC). His agent may not perform these steps in his name, if the agent is not authorized to represent this applicant before the EPO (AG-II National chapter EP.11).