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Case Law of the Boards of Appeal

 
 
4.2. General authorisations

This subsection deals inter alia with the extent of the powers conferred.

In J 11/93 the applicant submitted in his statement of grounds of appeal that the official communication should have been sent to the authorised European representative since he had been duly empowered to act on behalf of the applicant by a general authorisation filed with the EPO in respect of another European patent application. Instead of this the communication was sent directly to the applicant, a US company.

The board observed that the usual form recommended for general powers had not been used and nothing in the document filed with the co-pending application allowed the Receiving Section to infer that the applicant intended the said document to be regarded as a general power rather than a specific one. The board confirmed that the authorisation in suit had never been registered by the EPO as being a general one, and that even if it had been so registered it would then have been incumbent on the applicant to communicate the number allotted to the general authorisation so that the Receiving Section could take it into consideration before sending the communication to the applicant at its last known address, rather than to the representative. Under these circumstances the board considered that when the letter sent directly to the applicant was issued no European professional representative had yet been appointed by the applicant. Hence the provisions of R. 81 EPC 1973, according to which ­ if a representative (i.e. a European one) had been appointed ­ notifications were to be addressed to him, could not apply but consequently only those of R. 78(2) EPC 1973 (version as in force up to 31.12.1998) relating to notifications in respect of addressees not having either a residence or place of business in one of the contracting states and who had not appointed an authorised representative.

In J 9/99 (OJ 2004, 309) the board decided that the Legal Division had authority to check the authorisation of a representative named in a general authorisation and to issue a formal decision to reject the registration of a general authorisation. A decision not to register a general authorisation can only be issued in respect of a request from a party to the proceedings within the meaning of R. 101(2) EPC 1973, i.e. either an authorising or an authorised party.

In J 17/98 the Legal Board of Appeal had to rule on whether communications concerning the deemed withdrawal of applications had been correctly notified to the applicants, who were residents of a non-EPC contracting state, even though general authorisations were held by the EPO on their behalf. The applicants argued that the communications relating to deemed withdrawal should in fact have been notified to the representatives appearing in the general authorisations on file with the EPO. The board held that the filing of a general authorisation to act on behalf of a specific applicant and the notification of the appointment of a representative in an individual application were two separate procedural acts. By definition, general authorisations did not refer to specific cases and did not allow the EPO to assume, without further information from the applicant, that a specific representative had been appointed in a particular case. From the Convention it was clear that the filing of a general authorisation did not imply the appointment of a professional representative in a specific case. In such clear cases directly following from the provisions of the Convention the principle of the protection of legitimate expectations did not require the EPO to issue comprehensive legal advice extending beyond the form in question, provided it was in itself clear and unambiguous.

In case J 1/04, the relevant question in this case was whether the notifications of the communications were correctly addressed to the appellant. In the appeal proceedings the appellant no longer contested that the registered letters had come into the hands of its employee, who had picked them up at a local post office. The appellant criticised the EPO's practice of sending communications directly to the applicant, even if the latter had appointed a national representative in the international phase, as discriminative and as disregarding the express wish of the applicant not to handle matters himself.

The board first noted that Art. 133 EPC 1973 makes it clear that there is no obligation for an applicant having a principal place of business within an EPC contracting state to be represented in proceedings established by the Convention. If, however, the applicant wishes to be represented, he must authorise either an employee or a professional representative or legal practitioner. Whatever possibility the applicant prefers, if he does not wish to handle matters himself and therefore wishes to be represented, he must appoint a representative who is entitled, in accordance with the provisions of Art. 134 EPC 1973, to undertake representation before the EPO. In the case at issue the applicant did not do this, although the EPO had expressly pointed out to the applicant that an authorisation for the international phase did not comprise an authorisation for the European phase and that disregard thereof could lead to a loss of rights. The board held that the requirement that only persons fulfilling the conditions for representation before the EPO under Art. 134 EPC 1973 are entitled to undertake representation before the EPO was not of a discriminative nature. Furthermore, as long as the applicant did not appoint a representative who was entitled to represent him before the EPO, the general principle applied that procedural acts had to be performed by the EPO in relation to the registered applicant as being the party to the proceedings. Thus, notifications had to be addressed to the registered applicant and they had been correctly made if they were addressed to the applicant/appellant in the case at issue. The appeal was dismissed.

In T 1378/05 the appeal had been validly filed by legal representative G. on the basis of a "mere" authorisation to act "in matters concerning European patent application 'Method for authorisation in file transfer systems'" in proceedings before the German Patent Office, the Federal Patent Court and the - German - Federal Supreme Court. Thus there was no authorisation for proceedings before the European Patent Office. For such cases, Art. 2 of the President's decision of 19 July 1991 provided that the legal representative shall be requested to file an authorisation within a period to be specified by the European Patent Office. The appellant filed such an authorisation on 24 August 2007, i.e. within the two-month time limit set by the board in its letter of 27 June 2007 and therefore "in due time" within the meaning of R. 101(4) EPC 1973. The opponent argued that there was clear evidence to show that the authorisation filed subsequently by the patent proprietor was backdated and therefore could not have been signed on "18.12.1997". The filing of this substantively false document could not fulfil the requirement of filing a correct authorisation, so for this reason, too, the appeal had to be deemed not to have been filed. The board could not accept the opponent's argument. It also noted that it did not have to be decided whether the principle of the protection of legitimate expectations already made it imperative in this case to regard the appeal as validly filed by legal representative G., after he had been regarded as the patentee's representative throughout the proceedings so far as well as in the published patent specification. The opponent itself had only challenged this ten years later, after a file inspection at the appeal stage. The appeal was therefore to be deemed filed and was, moreover, admissible in other respects.

In T 1865/07, the board noted that, in the circumstances of the case, giving an incorrect general authorisation number was of no consequence.