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Case Law of the Boards of Appeal

 
 
4.1. Filing of the authorisation

R. 101 EPC 1973 redrafted becomes with EPC 2000 R. 152 EPC. Especially R. 152 (6) EPC reads, "If a required authorisation is not filed in due time, any procedural steps taken by the representative, other than the filing of a European patent application, shall be deemed not to have been taken, without prejudice to any other legal consequences provided for by this Convention." See also the decision of the President of the EPO dated 12 July 2007 on the filing of authorisations (OJ SE 3/2007, 128, L.1.). See also decision J 8/10 (OJ 2012, 470), point 4.4 below.

In J 12/88 it turned out that the former representative of the appellant had acted before the EPO on behalf of the appellant without being instructed to do so and using a forged authorisation. The board considered all these proceedings to be null and void. There had never been a valid European patent application before the EPO. All fees paid to the EPO on behalf of the appellant never had been due and had to be reimbursed.

In T 850/96 the appellant had alleged that the opposition was not admissible because the signatories of the notice of opposition did not file an authorisation. According to him an employee must declare with the notice of opposition that he acts as a professional representative. Otherwise he must file an authorisation. In the case under consideration both signatories of the notice of opposition were professional representatives. The board held that Art. 1(1) of the decision of the President of the EPO of 19 July 1991 (OJ 1991, 489) stipulates that a professional representative whose name appears on the list maintained by the EPO and who identifies himself as such shall be required to file a signed authorisation only in the circumstances set out in Art. 1(2) and (3) of this decision of the President (now decision of 2007, OJ SE 3/2007, 128). In the case at issue, the deficiency had not been the lack of a signed authorisation, but the failure of the signatories of the notice of opposition to identify themselves as professional representatives (see also T 1744/09 citing T 850/96 saying that a professional representative identifying himself retroactively is not precluded. T 1744/09 addresses other interesting topics like verbal or written authorisation ; "invalid signature").

In T 425/05, the respondent/patent proprietor requested the board at the start of the procedure to declare the appeal inadmissible, on the one hand because it had been filed at a date when the original opponent (company I) had been dissolved and had therefore ceased to have legal existence, and on the other because the mistake in the notice of appeal could not be a mere clerical error on the part of the professional representative which could easily be corrected, since the representative manifestly could not act on behalf of company F, which had not yet authorised him to do so. The board began by establishing that the representative's authorisation to act on behalf of company I had never been contested or rescinded. It was equally evident that the original opponent, company I, no longer had legal existence, as it had been dissolved and its assets had passed into the hands of company F, its associate and sole shareholder. The board concluded that company F had succeeded company I as opponent, and therefore also as the client of the representative. Thus the appeal filed by the representative, whose authorisation, confirmed in the meantime, had never been rescinded, had been implicitly, but necessarily, filed on behalf of his actual client, company F; the identification of company I as the opponent/appellant in the notice of appeal was due to a clerical error which had since been corrected. Citing T 425/05, see T 1744/09 concerning the admissibility of an opposition and the appeal.

In T 267/08 a change of representation had been notified by the new representative together with the notice of appeal. The previous representative had not contacted the EPO to indicate that his authorisation had terminated. In such cases, the procedure to be followed was governed by R. 152 EPC in combination with the decision of the President of the European Patent Office dated 12 July 2007 on the filing of authorisations (OJ SE 3/2007, L.1). This decision stated that in cases of a change of representation, and where the EPO had not been notified of the termination of the previous representative's authorisation, "the new representative must file, together with the notification of his appointment, an individual authorisation (original and one copy) or a reference to a general authorisation already on file. If he does not, he shall be requested to do so within a period to be specified by the European Patent Office."

In the case at issue, the board invited the new representative under R. 152(2) EPC to file an authorisation, as the board had realised that the authorisation failed to name the correct opponent. The new representative sent the authorisation by fax but failed to file the original version. Interpreting decision of the President L.1, the board concluded that where only a copy of the authorisation was filed in response to the invitation under R. 152(2) EPC the EPO was under no legal obligation to additionally request the filing of the original.

The board stated that the filing of a valid authorisation for the opponent/appellant must, of necessity, entail the filing of the original, and a professional representative should know this. The board considered that it should be sufficient to simply request that an authorisation be filed. The acceptable form of the authorisation was derivable from decision of the President L.1. Responsibility for filing a valid authorisation could not be devolved to the board. The legal consequence of this was that the procedural steps taken by the new representative were deemed not to have been taken (R. 152(6) EPC). Consequently the notice of appeal was deemed not to have been filed and an appeal did not exist. In the absence of an appeal, there was no basis for payment of the appeal fee, which was therefore reimbursed.

In T 534/07 it was decided that the validity of procedural acts undertaken by the representative for his client was not affected by the existence of a conflict of interest.

See also Chapter IV.E.2.4. "Entitlement to appeal", and in particular T 1324/06 where the very existence of the authorisation was challenged.