J 0901/86 (Professional representative/Legal incapacity) 04-11-1986
1. Legal incapacity of the professional representative under Rule 102(2)(a) EPC, as with Rule 90(1)(c), is incapacity to carry out professional work before the EPO, and must be of a persistent nature.
2. A reasonable basis for decisions on the matter by the EPO is the test: is the representative concerned in a fit mental state to do the work required of him or does he suffer from a persistent incapacity to make rational decisions and to take necessary actions?
3. The Legal Division is competent to decide on such incapacity and delete the representative concerned. However, it must base its decision on convincing evidence of persistent incapacity, obtaining additional evidence if that supplied is not conclusive.
4. A professional representative thought likely to be incapable of representing clients before the EPO must be thought equally likely to be incapable of defending his own interests and thus to present his comments on the grounds for any deletion proceedings. A decision deleting him for incapacity from the list of professional representatives which is taken without his having been assisted in the proceedings by an ad hoc guardian is thus in breach of Article 113(1) EPC.
Deletion for legal incapacity
Competence of the Legal Division
Additional evidence/need to obtain
I. By letter of ... the Legal Division of the EPO informed the appellant that it intended to delete his name under Rule 102(2)(a) EPC from the list of professional representatives before the EPO, because of doubts as to his capacity to practise before the EPO raised by a medical report ... and a sworn statement made by two witnesses before a notary on ..., supplied in connection with two European patent applications.
III. In its decision of ... the Legal Division of the EPO began by indicating that it was competent for all appealable decisions concerning entries in or deletions from the list of professional representatives before the EPO (Articles 20 and 106(1) EPC) and informed the appellant that he was being deleted from the list because he was no longer capable of performing those duties of a professional representative which involve monitoring (and observing) time limits.
IV. On ... the appellant appealed against this decision, paying the fee for appeal at the same time and submitting the statement of grounds on ... .
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC, and is therefore admissible.
2. Before examining the merits of the appeal the Board must consider whether under Article 20(1) and Rule 102(2)(a) EPC the Legal Division was competent to decide to delete a representative's name from the list, or in other words that he was "incapacitated" within the meaning of Rule 102(2)(a) EPC.
3. The Legal Division adduces such competence from the Legal Board of Appeal decision of 1 March 1985 (OJ 6/1985, p. 159 et seq.), which allowed that for the purposes of Rule 90(1)(c) EPC (interruption of proceedings) the EPO could assess a representative's legal incapacity.
4. In that decision the Legal Board of Appeal held that "the relevant aspect of his legal incapacity for the purposes of Rule 90(1)(c) EPC is that of his incapacity to carry out professional work on behalf of a client... . The matter is, of course, completely separate from any question of a representative's legal incapacity to manage his own personal affairs, which in accordance with the relevant national law will be governed by his nationality or domicile". It also considered that "there should be a uniform standard of judging legal incapacity, in order to avoid differences in the application of Rule 90(1)(c) EPC depending on the nationality or domicile of the representative", and that it was therefore for the European Patent Office to establish legal incapacity for the purposes of Rule 90(1)(c) EPC. The same considerations apply to Rule 102(2)(a) EPC, and the Board of Appeal therefore considers that the Legal Division was competent to decide under that rule that the appellant was incapacitated.
5. Whilst the yardstick for judging legal incapacity under Rule 102(2)(a) must thus be the same as for Rule 90(1)(c) EPC, another criterion - the persistence of the incapacity - must also be satisfied. It would be absurd to delete a professional representative's name from the list for a real but short-lived incapacity which had passed by the time the decision was delivered. In other words, the basis for assessing legal incapacity under Rule 102(2)(a) EPC could be as follows: is the representative concerned in a fit mental state to do the work required of him or does he suffer from a persistent incapacity to make rational decisions and to take necessary actions?
6. These being inquisitorial proceedings initiated by the EPO of its own motion, it is for the Office to establish this persistent incapacity whilst fully respecting the representative's rights under the Convention and general legal principles.
7. In the present case, the Legal Division took its decision on the following basis: (a) medical report ...; (b) sworn statement made before ... (notary) by two witnesses who had visited the appellant; (c) the fact that at the time in question a considerable number of the forty or so patent applications handled by the representative had been lost through failure to observe time limits; (d) the appellant's admission ... that on his own he was unable to monitor time limits correctly.
8. As the Legal Division states in its communication of ..., items (a) and (b) above were brought to its attention in connection with ... European patent applications handled by the appellant. The application dossiers show that those items were submitted by a third party (the applicant) in support of requests for interruption of proceedings under Rule 90(1)(c) EPC. The Board considers that although such items may justify the opening of an enquiry by the Legal Division they do not establish beyond doubt that the appellant's supposed incapacity at the time was of a persistent nature. In such a case, before taking its decision the Legal Division should have obtained more evidence, in the form of an additional medical report establishing whether the appellant's state of health was such as to constitute a persistent incapacity to practise.
9. The third factor - the loss of numerous patent applications through failure to observe time limits - and the appellant's acknowledgement, in reply to the Legal Division's communication, that he could not monitor them adequately, may indeed constitute corroborating evidence of the appellant's supposed incapacity at the time, but is not in itself sufficient proof of the persistent nature of that incapacity.
10. Lastly, the appellant's admission that on his own he was not able to monitor time limits correctly cannot be considered an admission of incapacity to perform that part of his work. On the contrary, it seems perfectly reasonable and, as is pointed out in the grounds for the appeal, it is for that very reason that most professional representatives leave such duties to trusted clerical staff. This does not mean they are incapable of performing them themselves.
11. Thus, in the opinion of the Board, the reasons on which the Legal Division based its deletion decision fall well short of conclusive evidence of the appellant's persistent legal incapacity.
13. The Board also considers that if the appellant is thought likely to be incapable of representing clients before the EPO he must by the same token be thought likely to be incapable of defending his own interests. The contested decision thus also breached Article 113(1) EPC, because insofar as the appellant was incapacitated he was unable validly to comment on the reasons ... for the contested decision. He should have been assisted during the proceedings by an ad hoc guardian.
14. In these circumstances and for the reasons set out above, the decision of the Legal Division ... must be set aside and the matter referred back to enable it to establish, by obtaining appropriate evidence under Article 117 and Rule 72 EPC, whether the appellant is at present suffering from persistent incapacity as a professional representative before the EPO, at the same time taking any necessary steps to enable him through the assistance of an ad hoc guardian to comment validly on all the reasons given for any new decision.
15. As the above-mentioned breaches of Article 113(1) and Rule 84 EPC constitute substantial procedural violations, the fee should be refunded under Rule 67 EPC.
For these reasons, it is decided that:
1. The decision of the Legal Division ... is set aside.
2. The matter is referred back to the Legal Divison.
3. The appeal fee is refunded.