T 641/11 – Don’t Know You

The present decision is a good reminder of the provisions governing authorisations.

The European patent under consideration was refused by a decision of the Examining Division (ED). The decision was notified to the authorized professional representative, Mr H., having his place of business in Germany.

A notice of appeal was filed and the appeal fee was paid by Mr L., a new professional representative having his place of business in the United Kingdom. The new and the previous representative were not members of the same association. Neither was an authorization filed for the new representative nor was the EPO notified by the previous representative that his authorization had terminated before the appeal was filed.

With communication dated February 23, 2011, the EPO informed the new representative that, according to R 152(1) in conjunction with Article 1(2) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorizations (OJ EPO 2007, L.1), an authorization in his favour had to be filed within a period of two months from the notification of the communication. Otherwise any procedural steps taken by him would be deemed not to have taken place.

On March 21, 2011, the new representative withdrew the appeal and requested refund of the appeal fee. No authorization was filed by him within the time limit referred to above.

With letter dated April 1, 2011, the previous representative laid down representation. Consequently, the new representative was informed by the EPO that he was recorded in the Register of European patents as professional representative for the patent application.

[1] According to R 152(8) a representative shall be deemed to be authorized until the termination of his authorization has been communicated to the EPO. The previous representative, Mr H., was therefore authorized until 1 April 2011 when he laid down representation.

[2] The new representative, on the other hand, did not file an authorization of the applicant when he had been requested by the EPO to do so. The legal consequence is that, according to R 152(6), any procedural steps taken by him before 1 April 2011 are deemed not to have been taken. Consequently, the notice of appeal filed by him on 19 January 2011 is deemed not to have been filed. The same is true for the withdrawal of the appeal. Since the appeal fee was therefore paid without reason it is to be reimbursed.

[3] On 1 April 2011, i.e. on the date when the previous representative laid down representation, the change of representatives has taken effect due to Article 1(2) of the Decision of the President of the EPO dated 12 July 2007 referred to above. Thus, according to R 130, the present decision is to be notified to the new representative.

I guess this could be used by a company that is not quite sure whether to appeal or not and that needs to buy some time (e.g., if the Opposition Division has maintained the opposed patent in amended form and the patentee will only file an appeal if the opponent does so). If the appeal is filed by a non-authorised representative who is not in the same association as the representative acting so far, then there is a two-month window starting with the notification during which the authorisation can be filed, so that the appeal is validly filed. If the company comes to the conclusion that the appeal should not be filed, then it just has to wait, and the appeal fee will be reimbursed.

But as you need a second attorney, it might be cheaper for the company to file an appeal and to withdraw it later on if the appeal is not useful.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.