BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.2.2 dated 3 June 1993 - T 598/91 - 3.2.2*
Composition of the Board:
J. van Moer
Patent proprietor/Respondent: VMI EPE Holland B.V.
Opponent/Appellant: Fried. Krupp AG Hoesch-Krupp
Headword: Tyre/VMI EPE
Keyword: "Representation and pleading - assistance at oral proceedings" - "Novelty (yes)" - "Inventive step (yes)"
Article 133 EPC does not exclude the possibility of pleading by an assistant at oral proceedings in technical or legal matters, in addition to pleading by the professional representative, the authorised employee or the party himself, where he is a natural person, provided that the Board and the party for which the assistant speaks have given their permission and the representative, employee or person continues to supervise the proceedings and bears full responsibility (cf. point 2.2 distinguishing T 80/84).
Summary of Facts and Submissions
I. European patent No. 0 223 317 was granted with effect from 12 April 1989 on the basis of European patent application No. 86 202 065.8 filed on 21 November 1986.
II. An opposition was filed against this patent on the grounds of lack of novelty and inventive step (Article 100(a) EPC) in the light of the prior art reflected by the following documents:
D1: English translation of JP-A-57-208 231,
D2: US-A-3 976 532,
D3: US-A-3 475 254, and
D4: FR-A-2 289 327.
III. The Opposition Division rejected the opposition in a decision dated 14 June 1991. According to the decision, the subject-matter of the claim was novel and involved an inventive step.
IV. On 7 August 1991, a notice of appeal was filed against the decision by the opponent. The appeal fee was paid on the same date. In the statement of grounds received on 2 October 1991, the appellant mentioned, in addition to documents D1 to D4, document
D6: DE-C-3 202 575.
V. Oral proceedings were held on 3 June 1993. At these proceedings, the European representative of the respondent when pleading was assisted by a qualified Dutch patent attorney who has not yet been entered on the list of European professional representatives according to Article 134 EPC.
VI. In the course of the oral proceedings, the respondent submitted a modified single claim together with a correspondingly revised description.
VII. The arguments presented by the appellant in its written submissions and at the oral proceedings, insofar as these are still relevant to the present claim, can be summarised as follows:
IX. The appellant requested that the decision under appeal be set aside and the patent be revoked in its entirety.
The respondent requested that the decision be set aside and the patent be maintained on the basis of:
Reasons for the Decision
1. The appeal is admissible.
2. Representation and pleading at the oral proceedings
As stated in point V above, the European representative of the respondent, when pleading at the oral hearing, was assisted by a Dutch patent attorney who has not yet been entered on the list of European professional representatives.
The Board permitted this assistance on the following grounds and conditions:
2.1 The only texts in the EPC which fall to be considered are Articles 133, 134 and, possibly, 125 EPC.
The following facts appear to be relevant to the question of pleading:
(a) The case law of the Boards of Appeal on this point is limited to decision T 80/84 (OJ EPO 1985, 269), which essentially held that an unqualified and unauthorised person, not entitled to represent a party, may not present part of a party's case at oral proceedings, even under the direct supervision of that party's authorised representative.
(b) On the other hand, according to the general practice of the Boards of Appeal for several years, representatives have been authorised to be assisted at oral hearings by assistants or experts who were explaining matters and pleading in lieu of the representative in certain areas of the discussions.
2.2 In the view of the Board, Article 133 EPC does not exclude the possibility of pleading by an assistant at oral proceedings in technical or legal matters, in addition to pleading by the professional representative, the authorised employee or the party himself, where he is a natural person, provided that the Board and the party for which the assistant speaks have given their permission and that the representative, employee or person continues to supervise the proceedings and bears full responsibility.
2.3 The Board is of the opinion that Articles 133 and 134 EPC create exclusive rights of representation before the EPO and have to be interpreted in a restrictive way, linked to the question of who bears ultimate responsibility.
Thus, it is certain that the said rights are limited to representation in any procedure, written or oral, before the EPO.
In all cases, therefore, not falling within the concept of representation, and contrary to decision T 80/84, the Board agrees that, subject to the restrictions mentioned below, any suitable assistant or expert can be allowed to plead on behalf of a party at oral hearings before the Board.
2.4 Decision T 80/84 did not distinguish between the concepts of "pleading" and "representation". Indeed, in the Board's view, "representation" comprises acting in lieu of someone for the purpose of exercising a right and "pleading" merely comprises developing arguments orally in court.
As a consequence, for example, when the party, being a natural person himself, is present at an oral hearing, only pleading (and not representation) is involved or requested which suffices to illustrate the substantial difference between these two concepts.
2.6 Moreover, the Board considers that the oral intervention of an assistant or expert at the hearing, whether in a technical or legal sphere but necessarily in addition to the pleading by the person supervising him, could be beneficial in resolving the case at issue as long as relevant technical or legal matters are developed in this manner.
In the Board's view such an intervention is in essence and character no different from the written statements these assistants or experts introduce into the proceedings. Moreover, there is no doubt that, in practice, many submissions of the parties and representatives have been investigated and written by assistants or auxiliaries.
The fact is that, regularly, the complexity and the number of the cases to be managed make it necessary to delegate tasks and that recourse to assistants is therefore indispensable and results in these assistants' being particularly well-informed concerning these cases.
2.7 It is also apparent that a discrepancy exists between those applicants and patentees who are within the jurisdiction of the Member States and those outside. The former are in a position to authorise any employee to represent them without the employee having to be qualified for the purpose, whilst the latter must, of course, hire a professional representative. There are good reasons for the distinction but this should not necessarily mean that those who are knowledgeable about the case, its background and technical relevance cannot assist in both situations by pleading themselves.
Finally, insofar as these assistants act under the supervision and responsibility of the person they are assisting, it can prima facie be assumed that they are competent.
2.8 It is within the discretion of the Board to give or withdraw its permission for the assistant to plead.
The pleading must of course be within the framework of the Rules of Procedure of the Boards of Appeal. Where the pleading becomes, for example, confused, too impassioned or counterproductive in any way, the permission may, where appropriate, be withdrawn.
2.9 It is, of course, also necessary that the party, on behalf of which the assistant speaks, has agreed to the assistant's intervention and that the representative, employee or person continues to supervise the proceedings and bear full responsibility throughout.
* This is an abridged version of the decision. A copy of the full text in the language of proceedings may be obtained from the EPO Information Office in Munich on payment of a photocopying fee of DEM 1.30 per page.