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Case Law of the Boards of Appeal

 
 
2.1. General issues

According to Art. 134(1) EPC, professional representation of natural or legal persons in proceedings established by the EPC may only be undertaken by professional representatives whose names appear on the above list. However, Art. 134(8) EPC (former Art. 134(7) EPC 1973) provides that professional representation in such proceedings may also be undertaken, in the same way as by a professional representative, by any legal practitioner qualified in one of the contracting states and having his place of business within such state, to the extent that he is entitled, within the said state, to act as a professional representative in patent matters. The arrangements for legal practitioners set out in Art. 134(8) EPC therefore constituted an exception.

In J 8/10 (OJ 2012, 472), the board observed that, if a legal practitioner wishes to act under Art. 134(8) EPC, the EPO considers whether he meets the conditions of that provision (i.e. is qualified in a contracting state and has his place of business and the right to act as a professional representative in patent matters in that state). For professional representatives it does not need to consider whether they are entitled to act before it, because it has its own list of those who are (Art. 134(1) EPC). If the legal practitioner fulfils the conditions, the EPO enters his name on a list which – like the list of associations of representatives – it keeps as an internal working tool and does not publish.

In J 19/89 (OJ 1991, 425) it was observed that despite all the differences in the designations and career backgrounds of the persons included in the ranks of legal practitioners, the profession had developed on an essentially equal footing in the contracting states as a result of Europe's common legal history and shared legal culture. The board noted that the last clause of Art. 134(7), first sentence, EPC 1973 was necessary because under national law even an actual legal practitioner might be precluded to some degree from acting as a professional representative in patent matters. That clause prevented a "Rechtsanwalt", "legal practitioner" or "avocat" from having more extensive powers of representation before the EPO than he was entitled to before his national patent office. Art. 134(7) EPC 1973 was therefore a special rule limited in scope to the corpus of legal practitioners, which existed under various designations in all the contracting states. Members of the profession of Rechtsanwalt and comparable professions in the contracting states were entitled under Art. 134(7) EPC 1973 to act as professional representatives before the EPO, not by virtue of their status as individual Rechtsanwälte but by virtue of the institution of the profession of Rechtsanwalt as such.

In J 18/99 the main issue was whether or not the appellant, a legal practitioner (abogado) qualified in Spain and having his place of business in Spain, was entitled under Art. 134(7) EPC 1973 to undertake professional representation of third parties in proceedings before the EPO. The board concluded that for the application of Art. 134(7) EPC 1973 all that was significant was that a legal practitioner qualified in a contracting state was - as such - entitled, within that state, to act as a representative in patent matters. The Convention did not distinguish for this purpose between entitlement to act as a "simple" representative or as a "professional" representative of clients (reference being made to the "travaux préparatoires"). Following the examination of national provisions and conclusions drawn by the OHIM (Communication No. 2/96 of its President of 22 March 1996, point 1), the board concluded that under the current Spanish law, any legal practitioner qualified in Spain and having his place of business in Spain was entitled to represent clients in patent matters before the Spanish Patent and Trademark Office if he presented an authorisation from the party.