The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke his patent.
In the course of the proceedings before the OD, there had been oral proceedings (OPs) held on February 25, 2008. On January 16, 2008, the representative of the patent proprietor filed a letter headed “Substitute Authorisation”, in which he stated that he authorised Mr Gerd J. to represent the patent proprietor at the OPs, referring to Mr J’s entitlement to represent under A 134(8). Nevertheless, during the OPs, the OD refused to let Mr J. speak. The OD referred to the date set under R 71a EPC 1973 and to the fact that the letter dated 16 January 2008 was not in their file.
The patent proprietor requested the Board to set aside the decision. According to him, the OD incorrectly refused Mr J. permission to speak, because they considered him as an accompanying person, and therefore applied the conditions set down in decision G 4/95. That decision was not relevant, because Mr J. was authorised to represent the patent proprietor as a legal practitioner according to A 134(8). Moreover, the OD had given the patent proprietor no opportunity to resolve these issues. The decision not to allow Mr J. to speak had therefore denied the patent proprietor his right to representation, which thus constituted a substantial procedural violation, which in turn justified immediate remittal of the case to the department of first instance and reimbursement of the appeal fee.
Here is what the Board had to say:
[2] At the OPs held before the OD on 25 February 2008, the OD refused Mr Gerd J. permission to speak on behalf of the patent proprietor.
[2.1] The requirements for representation by a legal practitioner are defined in A 134(8) and in Article 2 of the Decision of the President of the EPO (PEPO) dated 19 July 1991 on the filing of authorisations (OJ EPO 9/1991, 489), as cited in the summons to OPs issued by the OD (in EPO Form 2310). With the exception of renumbering of Articles and Rules, this decision is equivalent to the decision dated 12 July 2007 (OJ EPO 2007, Special edition No. 3, 128), which entered into force on 13 December 2007, i.e. between the date when the summons to OPs was issued and the date when the authorisation of Mr J. was filed.
A 134(8) requires that the legal practitioner be qualified in a Contracting State, that he have his place of business in that State, and that he be entitled in that State to act as a professional representative in patent matters. The first sentence of Article 2 of the cited decision of the PEPO requires additionally that the legal practitioner file either a signed authorisation or a reference to a general authorisation already on file.
The letter from the representative of the patent proprietor dated 16 January 2008, headed “Substitute Authorisation” contained an authorisation for Mr J. to represent the patent proprietor in accordance with A 134(8). This letter indicated the address of Mr J’s place of business in Germany and his status as a Rechtsanwalt entitled to carry out representation as a legal practitioner within the meaning of A 134(8), and was signed by the patent proprietor’s authorised representative, Mr B. The board therefore concludes that this letter represents an authorisation which establishes that Mr J. was entitled under A 134(8) to carry out representation and which fulfils the requirements of the first sentence of Article 2 of the cited decision of the PEPO.
[2.2] From the minutes of the OPs of 25 February 2008 and the decision under appeal, it is apparent that the OD did not consider Mr J’s status as a legal practitioner under A 134(8), at least in part because they did not have the letter of 16 January 2008 in their (paper) file. Instead, they treated Mr J. as an accompanying person, and therefore applied the requirements set out in decision G 4/95. In particular they based their refusal to allow Mr J. to speak on the failure of the patent proprietor to announce his intention that Mr J. should be able to make oral submissions before the date set in the summons to OPs pursuant to R 71a EPC 1973 (i.e. 21 December 2007).
[2.3] Since the patent proprietor requested Mr J’s participation in the OPs as a legal practitioner under A 134(8), not as an accompanying person within the meaning of decision G 4/95, the OD’s decision not to allow him to speak was taken under the wrong legal provision. Moreover, since for the reasons indicated […] above, Mr J. was entitled under A 134(8) to represent the patent proprietor, the outcome of that decision, i.e. not allowing Mr J. to speak, was incorrect. The board thus concludes that the OD denied the patent proprietor his right to be represented in the manner he chose. Such a denial of the right of representation has to be considered as a substantial procedural violation.
[2.4] The [opponent’s] arguments in this respect are not found convincing for the following reasons.
[2.4.1] In his written submissions (see his letter of 4 October 2011), the [opponent] questioned whether Mr Brunner had had the power of sub-authorisation when filing the letter of 16 January 2008. However, during the OPs before the board, the representative of the appellant stated that he had a general authorisation from the appellant dating back to 18 August 1997, which included the right to sub-authorise. The appellant did not challenge that statement, and the board has no reason to doubt its correctness.
[2.4.2] The [opponent] has also argued that the authorisation in the letter of 16 January 2008 was late-filed, because R 71a EPC 1973 was applicable to the filing of authorisations, as was clear from the fact that in the summons to OPs issued by the OD, the reference to the decision of the PEPO concerning authorisation of legal practitioners was immediately followed by the indication of the date set under R 71a EPC 1973, and because it is clear from the requirement in the second sentence of the cited Article in that decision, that some form of time limit is necessary to allow the filing and checking of such authorisations.
The board does not consider this issue to be relevant to the present case, since from the minutes of the OPs of 25 February 2008 and the decision under appeal, it is apparent that the OD did not consider whether Mr J. was duly authorised under A 134(8). Had they considered that question, and concluded that they had doubts on this matter, they would have been obliged to give the patent proprietor the opportunity to address those doubts, but since they do not seem to have addressed that issue at all, the question did not arise.
Moreover, the board notes firstly that R 71a(1) EPC 1973 concerned only the filing of “written submissions” and “facts and evidence”, but that authorisations do not fall into either of these categories, and secondly that since, as indicated in paragraph 2.1 above, the letter of 16 January 2008 satisfies the requirements of the first sentence of Article 2 of the cited decision of the PEPO, the second sentence of that article, referring to the practitioner being required to file an authorisation within a period to be specified by the EPO, is not applicable.
[2.4.3] Finally, the [opponent] argued that, even if the decision of the OD not to allow Mr J. to speak were to be considered as a procedural violation, it did not represent a substantial procedural violation which would justify immediate remittal to the department of first instance, because a procedural violation could only be considered to be substantial if it had an effect on the outcome of the procedure. He argued further that in the present case that requirement was not satisfied, because it was apparent from the outcome of the OPs held on 26 February 2008 concerning the patent granted on a divisional application from the application on which the patent in suit is based, in which the issues were similar, and at which Mr J. had been allowed to speak, the outcome was the same. The board is not convinced by this line of argumentation, because any conclusions as to what might have happened at the OPs in the present case had Mr J. been allowed to speak are merely speculation, regardless of the outcome of the related OPs held the next day.
[2.5] The board therefore concludes that the decision of the OD not to allow Mr J. to speak at the OPs of 25 February 2008 represents a substantial procedural violation.
[3] In the light of this conclusion, the board considers it appropriate to follow the appellant’s request to remit the case to the department of first instance for further prosecution, in accordance with Article 11 RPBA, and to order the reimbursement of the appeal fee, in accordance with R 103(1)(a).
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