In J 23/88 the Legal Board accepted the finding of the Receiving Section that an American patent attorney was not covered by R. 90(1)(a) EPC 1973 (R. 142(1)(a) EPC), being neither the applicant nor the proprietor of a European patent, nor a person authorised by national law to act on his behalf. The relevant category in that Rule (persons authorised by national law) covered legal representatives of the applicant (patent proprietor) but did not extend to a patent attorney authorised under the laws of a non-Contracting State, whose legal incapacity was, therefore, irrelevant to the operation of the above Rule.
The board however, acting on its own motion, came to the conclusion that the US patent attorney in the case at issue was, at the relevant time, a legally incapacitated representative of the applicant within the meaning of R. 90(1)(c) EPC 1973 (R. 142(1)(c) EPC). This interpretation was fully consonant with the preparatory documents regarding the desirability of equal treatment of applicants from contracting and non-contracting states. The board found that the difference in the wording of R. 90(1)(c) EPC 1973 (R. 142(1)(c) EPC) from that of R. 90(1)(a) EPC 1973 (R. 142(1)(a) EPC) was deliberately chosen so as to create equal treatment between applicants in the contracting and in non-contracting states. The board observed that Art. 133(2) EPC 1973 provided a limited exception to the normal requirement for professional representation within the meaning of Art. 134 EPC 1973 in the case, and only in the case, of the filing of the European patent application. Such a filing could validly be made by the applicant himself or by any representative duly authorised by him. Thus, in effect, once the processing of the international application had properly started in the EPO, an American patent attorney would lose his entitlement to act under Art. 49 PCT by virtue of the combined effect of Art. 27(7) PCT, Art. 133(2) EPC 1973 and Art. 134 EPC 1973. Once he lost his representative capacity, any interruption in proceedings occasioned by his death or legal incapacity would no longer be covered by R. 90(1)(c) EPC 1973.