3.2. Applicability of the Regulation on Discipline for Professional Representatives

In D 16/95 the board ruled that, although drafting and filing translations and paying fees in the national phase in a contracting state were not directly related to grant, opposition or appeal proceedings, such activities were still covered by Art. 1 RDR. They were, after all, activities in connection with a European patent (see Art. 65 EPC and Art. 141 EPC 1973) and as such part of a professional representative's job. Regarding them as covered by Art. 1 RDR was also justified by the fact that it was difficult for outsiders (e.g. persons commissioned to translate patent specifications) to distinguish between those of a representative's activities which were directly related to grant, opposition or appeal proceedings and those which were not. See also D 25/05.

According to the board in D 19/99, it followed from Art. 134(1) and (4) EPC that professional representatives are, in principle, the only ones entitled to act in all proceedings instituted by the EPC. Therefore, the disciplinary power delegated by the contracting states in Art. 134(8) EPC 1973 (Art. 134a(1) EPC) must necessarily be understood as relating to their activity as such. Moreover, it was a settled principle of law in the jurisdiction of the contracting states that provisions enacting disciplinary sanctions that restrict the free exercise of a profession were, like those of criminal law, to be interpreted narrowly. This narrow interpretation was also necessary to avoid conflicts of jurisdiction between the EPO and national disciplinary bodies. Thus, the disciplinary powers of the bodies set up under Art. 134(8) EPC 1973 (now Art. 134(a)(1) EPC) clearly applied only to the activities of professional representatives relating to the grant of a European patent. Furthermore, the wording in Art. 1(1) RDR required such interpretation. Under this narrow interpretation it would not be possible for the texts imposing disciplinary sanctions to govern, by analogy, other ancillary activities that a professional representative might also engage in. In the case at issue, it was clear from the file that all the unpaid invoices (which were the subject of the complaint) related only to British patents without any connection with any European patent. It followed that the applicant was acting in a capacity other than that of a European patent attorney.

The appellant in D 1/22 argued that the RDR applied, although the complaint concerned a dispute relating to a national patent (failure to transfer the patent as instructed by the complainants). The board disagreed, noting that the jurisdiction of the disciplinary bodies of the epi and the EPO as established by the RDR did not cover all conduct or activities of a professional representative (see D 19/99). The board pointed out that, while D 25/05 stressed that the power of the disciplinary bodies of the epi and the EPO was not solely restricted to activities as a professional representative in proceedings before the EPO, it confirmed that this power did not encompass conduct or activities which were not related to a European patent. Both D 25/05 and D 16/95 concerned the filing of a translation and/or the payment of fees under the EPC for the national parts of a granted European patent as required by the EPC (see in this chapter V.C.4.1). While in D 1/22 the national patent served as a priority application for a European patent, the complaint was only about the omission of a transfer of that national patent under the applicable national law. The national parts of the European patent, which claimed priority of the national application, were not at issue. The complaint was not related to any provision of the EPC either. The defendant's activities on which the complaint was based thus had no connection with a European patent and provisions of the EPC applicable to the national parts of any such patent (e.g. Art. 65 and 141 EPC). The fact that the defendant was a professional representative did not as such establish the link between the facts of the complaint and the EPC.