Oral submissions by persons accompanying the patentee or its representative are possible but subjected to the strict requirements laid down by decision G 4/95. In T 621/98 [2], it was held that the patent proprietor is a party to the proceedings and as such is not to be treated as an accompanying person. G 4/95 did not apply because it distinguished the parties from accompanying persons. Therefore, the patent proprietor, even if professionally represented, does not have to announce in advance his intention to make submissions during OPs. The present decision shows that this reasoning is not applicable to inventors who are not proprietors of the patent at issue.
[…] According to the appellant, the inventor, Mr Irnich, is to be considered both as a party to the proceedings and as an authorised representative before the EPA. Therefore, the Opposition Division (OD) would have had to hear the technical explanations of Mr Irnich and should not have considered him to be an unannounced accompanying person. [2]
The Board points out that these two qualities are irreconcilable. Pursuant to A 99(3), opponents are parties to the opposition proceedings as well as the proprietor of the patent. This limitative enumeration does not comprise the inventor. As a consequence, the inventor is not a party to the proceedings. The reason for this fact is that it is incumbent on the proprietor of the patent to defend its patent either itself or via a professional representative. If – as in decision T 621/98 cited by the appellant – the proprietor of the patent is the same person as the inventor (see T 621/98 [1-2]), then he is a party to the proceedings and has the right to give his view on different issues. By contrast, in the present case the inventor, Mr Irnich, is not the same person as the proprietor of the patent, i.e. “Z&J Technologies GmbH”. Therefore the situation underlying T 621/98 does not apply to the present case. [2.1]
According to the documents on file, the representative of the patent proprietor had not announced Mr Irnich as accompanying person for the oral proceedings (OPs) before the OD, nor had Mr Irnich been identified as authorised representative, by filing a power of attorney (Prokura), before or during the OPs. Contrary to the opinion of the patent proprietor, the obligation of the EPO to examine of its own motion (Amtsermittlungsgrundsatz) does not include the obligation to find out whether or not an accompanying person, e.g. a proxy of a company, is authorised to represent a party. Rather it is incumbent on the party to take the initiative to inform the OD or the Board on such circumstances before the OPs, by submitting such a power of attorney. This had not been done in the present case for Mr. Irnich. Moreover, it appears from the minutes that the opponent had objected to the proprietor's request to hear technical submissions from the inventor. [2.2]
In these circumstances, and applying the criteria of G 4/95, the OD has acted correctly by categorising the inventor as an “accompanying person” and not as a party to the proceedings within the meaning of A 99(3) and by rejecting the proprietor's request. The allegation of the appellant that the right to be heard pursuant A 113(2) had been violated by the OD is not justified. [2.2]
To read the whole decision (in German), click here.
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