D 0001/79 (Condition for enrolment) 11-07-1980
1. An applicant for enrolment for the European Qualifying Examination must have been trained under the supervision of qualified professional representatives.
2. The whole of the full time training period must be dedicated to training.
3. Evidence in support of an application should be made available to the Examination Board and not submitted for the fist time to the Disciplinary Board of Appeal and should be as detailed as possible.
Condition for enrolment
Full time training periods
Evidence as to the training and employment of candidates
I. On 27 September 1979 the appellant submitted an application for enrolment for the first Qualifying Examination for professional representatives before the European Patent Office.
II. In support of his necessary assertion that he had worked full-time for a period of at least four years within the meaning of Article 7, paragraph (1) (b) of the Regulation on the European Qualifying Examination for professional representatives before the European Patent Office, hereinafter called "the Regulation", the appellant produced the following documents:
(a) a letter dated 21 September 1979 from a professional representative resident in the German Federal Republic and practising there as a Patentanwalt.
(b) a letter dated 26 September 1979 from a professional representative, resident and practising in Great Britain, whose firm has offices in several cities, including Munich.
III. According to the letter dated 21 September 1979, the appellant was an American patent lawyer who had, from 1968 to 1978, worked in close cooperation with the Patentanwalt concerned in the filing and prosecution of patent applications in the German Patent Office and the patent offices of other European countries. During that period, the appellant had had full responsibility for the prosecution of patent applications in Europe for an American company and resided in Germany. He had worked closely together with the Patentanwalt in connection with patent applications and oppositions in the German Patent Office and conferred with him on strategy and on co-ordination with patent matters in other European countries.
IV. According to the letter dated 26 September 1979, the appellant has worked since 1 August 1978 in the Munich office of the firm of the writer of that letter, as his assistant, under his supervision, in the preparation, filing and prosecution of patent applications in the European Patent Office.
V. By a decision dated 30 October 1979, the Examination Board rejected the application on the ground that the appellant had failed to provide evidence satisfying the criteria of Article 7, paragraph (1) (b) (i) of the Regulation.
VI. In relation to the first letter the Examination Board found the relationship between the writer of the letter and the appellant to be the reverse of the one envisaged in Article 7, paragraph (1) (b) (i) of the Regulation, where the Professional Representative is to give instructions to his trainee.
VII. The Examination Board also found that the second letter indicated that its writer was not in a position to exercise supervision from London over the appellant in Munich on the basis of day-to-day guidance, direction and assistance, without direct personal contact and without direct control over the work carried on by the appellant.
VIII. The appellant appealed against the decision of the Examination Board by a letter dated 7 November 1979 on the following grounds:
(1) the refusal of the application was based on an unduly restricted and unjustified construction and interpretation of Article 7, paragraph (1) (b) (i) of the Regulation, in particular the terms "training", "supervision" and "assistant" as used therein were misconstrued by the Examination Board;
(2) the decision appealed from made no reference to the long experience of the appellant in the European patent field;
(3) no consideration was given to the appellant's professional background and experience in the USA as well as in Europe.
IX. In his letter dated 7 November 1979, the appellant made assertions of fact additional to those put before the Examination Board in the letters from the two professional representatives. These were, in essence, that:
(a) The appellant had had to subject himself to discipline and instruction in the field of patent law and procedure in Europe.
(b) The writer of the first letter had the last word as to what could and could not be done in prosecuting cases before the German Patent Office and instructed the appellant accordingly.
(c) The professional representative for whom the appellant is currently working and who wrote the second letter in fact regularly visits the Munich office of his firm. In addition, postal, telephone, telegraphic, telex and air transport communication facilities between London and Munich are such that the two cities are not effectively far apart.
(d) The appellant had been admitted to practice before the United States Patent and Trade Mark Office, the Courts of the District of Columbia and of the State of Oklahoma and had been "in-house" patent attorney for a large American corporation for 25 years. He had had 18 years experience of foreign patent prosecution for that corporation, 13 years of which had been spent in Europe.
1. The appeal complies with the provisions of Article 23, paragraph (2) of the Regulation and is, therefore, admissible.
2. Article 7, paragraph (1) (b) (i) of the Regulation on the European Qualifying Examination states that candidates for the European Qualifying Examination must have "completed a full time training period of at least four years in one of the Contracting States" under the supervision of one or more professional representatives and during that period must have "taken part as an assistant to that person or those persons in a wide range of activities pertaining to European Patent Applications or European Patents".
3. By virtue of the transitional provisions of Article 24, paragraph (2), of the Regulation, during a period of four years, which is currently running, the Examination Board shall take into account candidates' activities in proceedings relating to national patent applications and patents in determining the period of professional activity referred to in Article 7, paragraph (1) (b).
4. Article 16, paragraph (2) (b) of the Regulation requires that an application for enrolment for the European Qualifying Examination should be accompanied by a certificate issued by a professional representative or by the candidate's employer attesting to the completion of a period of training or employment required by Article 7, paragraph (1) (b) and indicating the nature and duration of the duties performed by the candidate.
5. The Examination Board was of the opinion that the letter dated 21 September 1979 from the German Patentanwalt did not furnish evidence satisfying the criteria of Article 7, paragraph (1) (b) (i) of the Regulation. The Examination Board considered that the appellant was shown to be the principal acting on behalf of his employer, giving instructions to the German Patentanwalt.
This relationship was, in the opinion of the Examination Board, the reverse of that envisaged in Article 7, paragraph (1) (b).
6. The appellant contends on this appeal that he was in fact being trained because he did analytical and drafting work on his employer's German cases which was submitted to the Patentanwalt who generally adopted it but had the last word as to what could or could not be done and "instructed" (sic) the appellant accordingly.
7. The Disciplinary Board of Appeal consider that this argument is not well founded and that the Examination Board's conclusion was correct. On all the available evidence, the relationship was clearly one in which, in the event of a disagreement between the appellant and the Patentanwalt concerned, the appellant could at any time withdraw his employer's professional patent work from that Patentanwalt and transfer it to another Patentanwalt who was prepared to do what the appellant considered to be right. In reality, therefore, the appellant always had the last word. We do not think that such a relationship can in law properly be regarded as one in which the appellant was under supervision by the Patentanwalt concerned at all, and we reject the appellant's contrary contention.
8. In the letter dated 21 September 1979, it is also stated that the appellant "had full responsibility for the prosecution of patent applications in Europe for an American Company". Therefore, as the whole of his working time was not dedicated to training, but partially to professional work covering many European countries, it is clear that the condition of Article 7 (1) (b) (i) that there must be a "full-time training period" was not fulfilled.
9. As the appellant has not worked for the minimum period of four years for the writer of the second letter, it is not necessary for us to decide any other issue on this appeal, as it must fail for the reason given in the previous paragraphs. In particular, it is not necessary for us to decide upon the adequacy of the evidence as to supervision in the second letter.
10. We would merely add for the guidance of appellants in future cases that it is desirable that (i) evidence sought to be relied upon should be made available to the Examination Board and not proposed for the first time to the Disciplinary Board of Appeal and (ii) evidence as to the training and employment of the candidate and the nature and duration of his duties should be as detailed as possible. Mere assertion is not enough. Sufficient information must be given to enable the Examination Board to assess the position fully.
For these reasons it is decided that:
The appeal against the Decision of the Examination Board dated 30 October 1979 is dismissed.