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Case Law of the Boards of Appeal

 
 
2.3. Qualifying conditions according to Article 134(8) EPC

In J 19/89 (OJ 1991, 425) the Legal Board of Appeal considered whether a patent attorney under national law should, in view of his legal qualifications and entitlement to act as a professional representative in national patent matters, be regarded as a "legal practitioner" within the meaning of Art. 134(7) EPC 1973 and hence be authorised to act before the EPO. The board decided that irrespective of his specialist qualifications and powers of representation in national patent matters, a patent attorney under national law could not be regarded as a "legal practitioner" within the meaning of Art. 134(7) EPC 1973, and therefore was not entitled to act as a professional representative before the EPO (see also D 14/93, OJ 1997, 561).

In T 643/01 the appellant (patent proprietor) contended in particular that the opponent's reply of 28 January 2002 was inadmissible on the ground that it had been signed by Mr R., who was a legal practitioner and member of the Paris Bar but who was allegedly unable to show that he possessed an authorisation conforming to the requirements of R. 101(1) EPC 1973. The appellant requested that, if the signatory concerned was relying on his official status as a professional representative before the EPO, the board should find that French law prohibited such a plurality of offices, since the exercise of the profession of barrister could not properly be combined simultaneously with that of industrial property attorney. In the appellant's view, these provisions should be transposed into the law of the EPC. The board held, in the case at issue, that the signatory of the impugned pleadings of 28 January 2002 was entitled to act before the EPO and held the appropriate authorisation for that purpose. Mr R. and Mr D., legal practitioners and members of a partnership, were indeed members of the Paris Bar, and the names of both appeared on the list of professional representatives before the EPO. They were therefore both entitled to act in one capacity or the other before the EPO under Art. 134(1) and (7) EPC 1973. The board held that a decision on the legality, in France, of simultaneously exercising the profession of barrister and acting as a professional representative before the EPO fell solely within the jurisdiction of French professional and judicial bodies.

In J 27/95, the Legal Board of Appeal first made it clear that the competence of legal practitioners to undertake representation before the EPO depended directly on their complying with the provisions of Art. 134(7) EPC 1973. Thus, each time a legal practitioner made a request to act as a professional representative in proceedings before the EPO, the Legal Division had the right to examine whether he or she satisfied the conditions under Art. 134(7) EPC 1973. If such a request was refused, it could be refiled and reconsidered on the basis of new facts at any time. In its decision the board pointed out that according to Art. 134(7) EPC 1973 a legal practitioner qualified in a contracting state had to have "his place of business in such State". The board noted that in all three languages of the EPC 1973 the expression "his place of business" (in contrast to "a place of business") was used. The board stated that this formulation made it clear that the place of business within the meaning of Art. 134(7) EPC 1973 was the place (if any) at which a person practised his or her profession as legal practitioner.