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Case Law of the Boards of Appeal

 
 
4.4. Authorisation of an association of representatives

As explained in J 8/10 (OJ 2012, 470), the EPO keeps a list of associations of representatives as an internal working tool which it does not publish.

In J 16/96 (OJ 1998, 347) the EPO Legal Division had informed a company X that its patents department could not be registered as an association of representatives. Such an association meant one consisting solely of professional representatives in private practice. This was clear from the "Communication on matters concerning representation before the EPO" (OJ 1979, 92 ; on this communication, see also J 8/10 (OJ 2012, 470) points 2.7 and 14 of the Reasons and below). Since the members of a company's patent department were not in private practice, they could not be registered as an association.

The board concluded that there was no basis in the Convention for the EPO's practice of restricting R. 101(9) EPC 1973 (now R. 152(11) EPC) to professional representatives "in private practice". An association within the meaning of that provision could therefore also be formed by professional representatives not in private practice. Representatives had often pooled their resources by forming some kind of association, such as a firm. This was why it had been reworded, and the original terms "partnership" and "Sozietät" replaced with more general ones: "association of representatives" and "Zusammenschluss von Vertretern". The French term "groupement de mandataires" had remained unchanged (see CI/GT VI/166d/77 of 20.4.1977). In view of this, there was no reason to interpret the term "association of representatives" in a way which limited its meaning. (J 16/96 cited on this point in T 656/98).

The recent case J 8/10 (OJ 2012, 470) was about whether legal practitioners too could belong to associations of representatives under R. 152(11) EPC (R. 101(9) EPC 1973), with the board discussing various practical aspects and their legal consequences. The contested decision was the Legal Division's refusal to register a legal practitioner as a member of such an association. Under the President's decision of 12 July 2007 on the filing of authorisations (OJ SE 3/2007, 128), professional representatives had to file an authorisation only in certain cases, whereas legal practitioners always had to do so. With a view to the President's regulatory discretion and to transparency for those represented, the Legal Board felt that the distinction between professional representatives and legal practitioners was appropriate, not arbitrary.

The decision on the filing of authorisations contained no provisions specific to associations of representatives. Under R. 152(11) EPC, the authorisation of an association of representatives was deemed to be an authorisation of any representative who could provide evidence that he practised within that association. In other words, it was a legal fiction. If a legal practitioner entitled to act before the EPO under Art. 134(8) EPC joined an association of representatives, that legal fiction meant he could take all steps the association was authorised to perform. As Art. 2 of the decision on the filing of authorisations stood, any legal practitioner authorised to act before the EPO had to file a signed authorisation or a reference to a general authorisation already on file. The Legal Board took the view that the possible contradiction could be resolved only by interpreting R. 152(11) EPC as referring to an association of professional representatives. Therefore, legal practitioners were not covered by the legal fiction of R. 152(11) EPC, and the appeal had to be dismissed.