3.1 – Representation

Question 1

Who needs representation before the EPO?

Answer 1

Parties not subject to mandatory representation:
* parties having their residence or place of business in a contracting state
* they may be represented by an employee (Article
133(3) EPC), who must be duly authorised (Rule 152(1) EPC, GL A-VIII, 1.4).

Parties that require mandatory representation:
* parties (natural or legal persons) who have neither their residence nor their principal place of business in a contracting state must be represented by a professional representative or legal practitioner (Article 133(2) EPC and Article 134(8) EPC).

Question 2

Forms of representation:

Answer 2

1. Professional representatives
2. Legal practitioners
3. Authorised employees (no restrictions on the employee’s nationality)

A “national” patent attorney is not allowed to act as a professional representative before the EPO (not considered to be a “legal practitioner”)

Question 3

Procedures which may be performed without a representative:

Answer 3

1. Filing an application (regardless of applicants’ residence or principal place of business
2. Entry into the EP phase (after the 31-month time limit, procedural steps such as entry will need to be through a professional representative)
3. Payment of fees

Question 4

How are multiple applicants represented?

Answer 4

If multiple applicants file an application together, they will act as joint applicants through a common representative in proceedings before the EPO.

The common representative represents a single point of contact for official communications from the EPO relating to the application (Rule 130(3) EPC).

The same principle apply to joint proprietors of a patent and multiple opponents or interveners giving joint notice of opposition or intervention.

The common representative can be designated in:
* the request for grant of a European patent (Rule 41(3) EPC),
* the notice of opposition (Rule 76(2)(d) EPC) or
* the notice of intervention (Rule 89(2) EPC) (Article 133(4) and Rule 151 EPC).

Rule 151 - Appointment of a common representative

Question 5

When is an authorisation required at the EPO?

Answer 5

• Professional representatives / legal practitioners: Usually do not need an authorisation, except if their status is unclear or a change of representative has occurred.
• Employees who are not professional reps: Must always file a signed authorisation to act for the applicant.

Question 6

What happens if a required authorisation is not filed at the EPO?

Answer 6

The EPO will invite the party to file the authorisation within a set period.

This period can be extended on request (Rule 132 EPC).

If the authorisation is still not filed in time, any procedural acts already taken (except filing the European patent application) are considered never done.

Indirect consequences depend on what procedural steps were affected.

Question 7

To whom does the EPO send correspondence?

Answer 7

Normally, correspondence is sent to the appointed representative (Rule 130(1) EPC).

If several representatives are appointed, the EPO may notify any one of them or the common representative if there is one (Rules 130(2) & 130(3) EPC).

If an applicant acts through an employee and has no representative, correspondence is sent to the applicant’s address, not the employee.

Question 8

Can the appointment of a professional representative be revoked?

Answer 8

Yes.

The appointing party can terminate the representative’s authorisation by notifying the EPO.

A new representative must be appointed if the party is required to have representation (Article 133(2) EPC).

Question 9

Can a professional representative renounce their appointment?

Answer 9

Yes.

The representative can renounce their appointment by notifying both the EPO and the party they represent.

Question 10

Can third parties who are not professional representatives intervene in EPO oral proceedings?

Answer 10

Yes, but only with permission from the division.

This includes trainees accompanying a professional representative or an authorised employee.

Submissions cannot be made as a right.

Parties themselves are not considered accompanying persons; they can speak by virtue of being parties.

Question 11

Who is deemed the common representative when one applicant must appoint a professional representative?

Answer 11

If any applicant is required to appoint a professional representative, that representative becomes the deemed common representative, unless the first-named applicant has already appointed a professional representative (Rule 151(1) EPC).

Question 12

Can a patent proprietor who is a resident in a contracting state make submissions themselves in EPO proceedings?

Answer 12

Yes.

They do not need to be represented and may make submissions themselves (GL E-III, 8.5; T 621/98). Authorised employees can also act on behalf of a company proprietor.

This is different from an accompanying person under G 4/95.

Question 13

Under what conditions can an accompanying person make submissions in EPO proceedings?

Answer 13

Submissions by an accompanying person require permission and discretion of the division (G 4/95, GL E-III, 8.5). The division considers:

1. Whether the party filed a request.
2. Whether the request names the person, their qualifications, and the subject-matter.
3. Whether the request was filed sufficiently in advance.
4. For late requests, whether exceptional circumstances exist or all other parties agree.
5. Submissions must be under the continuing responsibility of the professional representative.

Note: Hearing an “expert” under Rule 117 EPC requires a decision to take evidence (GL E-IV, 1.4), unlike oral submissions by an accompanying person. Late requests without justification may be refused (T 1706/06).