T 754/08 – Trouble With An Ex

This decision deals with an appeal of the opponent against the decision to maintain the patent in amended form.

The patent proprietor requested that Mr R., a former patent attorney who, as announced by letter, accompanied the professional representative of the appellant, not be allowed to make oral submissions. The patent proprietor did not dispute that Mr R. had the knowledge of a technical expert in the field of the patent in suit. However, since he was the former patent attorney of the opponent in this case, his submissions would be those of a professional representative. Since he was not authorised to act in the latter function, he should not be allowed to speak during the oral proceedings (OPs).

[2] The Enlarged Board of Appeal dealt with the issue of oral submissions by a person accompanying the professional representative of a party in its decision G 4/95. According to this decision (see points (1) and (2) of the order), said accompanying person may make oral submissions on specific legal or technical issues on behalf of that party, in addition to the complete presentation of the party’s case by the professional representative with the permission of and at the discretion of the EPO (see point (3)(a) of the order).

When exercising its discretion the EPO should consider in particular the following criteria (see point (3)(b) of the order):

(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.

(ii) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.

Furthermore, the Enlarged Board decided that the same criteria applied to qualified patent lawyers of countries which were not contracting states to the EPC, without any further special criteria (point 3(c) of the order and point [13] of the reasons).

[2.1] In the present case the appellant had announced in due time […] that Mr R., a consultant of the appellant for technical questions, was going to participate in the OPs to make oral submissions on technical issues. It has not been disputed that his education and his present activity as technical expert in the field qualify Mr R. as a technical expert. Furthermore, the professional representative stated that the submissions of Mr R. would be made under his continuing supervision and would concern exclusively specific technical issues, in other words they would not replace but merely complement the case as presented by him.

[2.2] Mr R. is not disbarred simply because he is a former European patent attorney. The conditions set out by the decision G 4/95 are applicable to any accompanying person. Therefore, there is no reason to exclude a former European patent attorney as such. The respondent’s fear that his oral submissions could be those of a patent attorney rather than those of an expert is unfounded, since the professional representative of the appellant has explicitly stated that Mr R. would only speak about specific technical issues, while he himself would present the case.

[2.3] Under these conditions, the board sees no reason not to allow Mr R. to make oral submissions during the OPs.

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