Thursday, 2 February 2012

J 8/10 – No Lawyers

This decision concerns the registration of an association of representatives pursuant to R 152(11).

The appellant, a German legal practitioner (LP), together with 11 professional representatives (i.e. European patent attorneys), had requested the EPO to register their association.

The Legal Department registered the association of the 11 professional representatives and informed the appellant that he could not be registered as a member of the association because an association could only be formed by professional representatives.

The appellant then requested an appealable decision.

The decision was issued on July 15, 2009. The refusal was based in particular on the “Communication on matters concerning representation before the EPO” (hereinafter referred to as “ComMatRep”, OJ EPO 1979, 92) and the Decision of the Administrative Council (AC) on the interpretation of R 101(9) EPC 1973 (corresponding to R 152(11) EPC 2000) of December 1978 cited therein (and referred to as “DecInt” hereafter), whereby the AC stipulated that “an ‘association of representatives’ [was] to be taken as meaning an association consisting solely of professional representatives on the EPO list in private practice”.

The LP then filed an appeal.

He pointed out that the wording of R 152(11) and the legal systematics concerning this provision did not justify a different treatment of LPs and professional representatives. The rule referred to “representatives” rather than “professional representatives”. A 134(8) stipulated that representation in proceedings before the EPO might also be undertaken, “in the same way as by a professional representative”, by any LP. Therefore, the term “representative” in R 152(11) comprised both professional representatives and LPs entitled to represent parties pursuant to A 134(8).

The appellant argued both from a historic and a teleological point of view. He pointed out that the lawmaker had always had the intention to treat LPs in the same way as professional representatives. The purpose of A 134(8) was to ensure that only highly qualified persons could represent parties before the EPO. Neither the EPC nor the history of its origins suggested doubts as to the qualification of LPs. Moreover, the control mechanisms of the EPO and the Institute of Professional Representatives (epi) regarding professional representatives had been considered to be equivalent to national control mechanisms applying to LPs. Therefore, there was no justification for having different rules regarding the possibility of registering as members of associations.

The Legal Board dismissed the appeal. The headnote says (in English translation):
Against the background of the applicable rules concerning the filing of authorisations, a legal practitioner cannot be treated as a member of an association of representatives within the meaning of R 152(11).
The decision is going to be published in the Official Journal. 

If your command of German is not sufficient and you do not want to wait for the official translation, well, here is mine:

*** Translation of the German original ***

[1] The appeal is admissible […].

[2] First of all [the Board] has to examine which legal norms are to be applied, how they relate to each other and to which extent they are binding on the Boards.

[2.1] The entitlement to represent [parties] in proceedings before the EPO is above all governed by A 134. The entitlement of legal practitioners is laid down in A 134(8). The filing and effect of authorisations is laid down in R 152; the authorisation of an association of representatives is mentioned in paragraph 11 of this rule. There were no major amendments to these rules during the revision of the EPC; R 152(11) corresponds to R 101(9) EPC 1973.

[2.2] The “Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations” (OJ EPO special edition 3/2007, 128, hereinafter referred to as “DecFilAuth”) was based on R 152(1). This decision stipulated that professional representatives had to file authorisations only in particular circumstances, whereas legal practitioners have to file an authorisation in any case (Article 1 and 2 of the Decision). Therefore, when exercising the power conferred to her by R 152(1), [the President of the EPO] distinguished between professional representatives and legal practitioners (as a previous decision on the filing of authorisations dated July 19, 1991, OJ EPO 1991, 489 had already done), although R 152(1) only refers to “representatives” and, therefore, to both professional groups.

[2.3] The Board does not see any reason to doubt the lawfulness of the DecFilAuth and its binding force also for the Boards. The decision does not exceed the margin of discretion conferred to the President of the EPO in application of R 152(1). Its substantive rules do not reveal any abuse of discretion. The distinction between professional representatives and LPs appears appropriate and not arbitrary. Professional representatives are subject to the disciplinary power exercised by the Institute of Professional Representatives (epi) or the EPO (A 134a(1)(c)) whereas the disciplinary power to which legal practitioners are subject is a matter of national law and is exercised by national organisations or offices. Whether a professional representative is entitled to represent [parties] can be checked by anybody by inspection of the list maintained by the EPO pursuant to A 134(1) and (2). In the case of legal practitioners such a check requires much more effort. In view of the transparency offered to represented parties it is at least desirable that the represented party knows at any time whether it is represented by a professional representative having undergone technical training or by a legal practitioner who has not necessarily undergone such technical training. The rule requiring a legal practitioner to file an authorisation favours transparency in this respect.

[2.4] The DecFilAuth does not contain any specific rules for the authorisation of associations of representatives. As a consequence, it does not contain any exceptions from the duty of filing authorisations regulated by the decision, which would apply to such associations or their members.

[2.5] When discussing whether R 101(9) EPC 1973 – which was inserted into the Implementing Regulations at a later time (and which is identical to present R 152(11) from a substantive point of view) – was to be deleted, the AC of the European Patent Organisation laid down, in December 1978, how this rule was to be interpreted. According to this DecInt an “association of representatives” within the meaning of R 101(9) EPC 1973 is to be taken as meaning an association consisting solely of professional representatives on the EPO list in private practice (ComMatRep, OJ EPO 1979, 92, number 1, 2nd paragraph; cf. the Communication in OJ EPO 1978, 281). By limiting [the meaning] to professional representatives the DecInt has retained an interpretation that is more narrow than the wording as such, to the extent that the “representative” in R 152(11) refers to both professional representatives and legal practitioners who are entitled to represent [parties].

[2.6] When the Legal Board of appeal had to decide whether an association of representatives within the meaning of R 101(9) EPC 1973 could also be formed by professional representatives who are not working in private practice, it deliberately deviated from the DecInt and decided that the possibility of forming an association was not limited to professional representatives in private practice (J 16/96). In decision J 16/96 the Board did not have to consider the question of whether LPs could be members of an association pursuant to R 101(9) because all the members of the association under consideration were professional representatives.

[2.7] Decision J 16/96 [2] expressed the opinion that the DecInt was not binding on the Boards but that it was to be taken into account when interpreting R 101(9) EPC 1973. The DecInt was published in the context of the ComMatRep (OJ EPO 1979, 92). This communication contained not only the DecInt but also various explanations and implementing regulations in view of implementing the DecInt. These parts of the Communication published in 1979 are not binding on the Board, either, and can at most have subordinate relevance for the interpretation of R 152(11).

[2.8] Insofar as the EPC and the Implementing Regulations do not contain any rule, the Board has to base its decision above all on the DecFilAuth, which, being based on the entitlement conferred by R 152(1) and implementing this rule, has normative quality. The other provisions mentioned above (point [2.7]) which could qualify as legal basis do not have normative character and, consequently, are not binding on the Board.

[3] The appellant has explained to the Board why the possibility of authorising associations of professional representatives and entering them as representatives in the Patent Register was of practical significance. The advantage of such associations was manifest when individual professional representatives joined or left the association. Changes in the composition of an association became more and more frequent with increasing size of the private practice or the association. The registration of the change of a composition of an association made it unnecessary to have to change the registration of who represented [the party] for each application a law firm was taking care of.

[4] The Board agrees with the appellant that when the relevant provisions of the Implementing Regulations to the EPC mention an association of representatives, what they mean is the association in its effective composition. Once an association has been authorised [to act], each representative of this association is authorised to act in the name of the represented party if he is a member of this association at the time of the action. If only the representatives who were members of the association on the day on which the association was authorised, or at the moment when the association was entered into the list maintained by the EPO, then the administrative simplifications mentioned by the appellant […] could not be obtained.

[5] Association of representatives are mentioned in R 143(1)(h) and R 152(11) of the Implementing Regulations to the EPC ; no further rules concerning associations are found, neither in the EPC nor in the Implementing Regulations. R 143 deals with entries into the Patent Register. Paragraph (1)(h) of this rule stipulates that in the case of an association referred to in R 152(11), the Register shall only contain the name and address of the association. R 152(11) stipulates that the authorisation of an association of representatives shall be deemed to be an authorisation of any representative who can provide evidence that he practises within that association. Therefore, there is a legal fiction according to which any representative practising within the association is authorised.

[6] Although R 152(11) refers to an “authorisation of an association of representatives”, it is not the association as a legal person that is authorised. The authorisation is granted only to the individual members of the association (J 16/96 [4.3]) This also holds true when the authorisation form only mentions the name of the law firm or the company of a legal representative (Rechtsträger) (for instance, “XY Patentanwälte AG” and when the order to represent a party in proceedings before the EPO is given to the legal representative of a law firm. When a representative expressly signs a written submission directed to the EPO in the name of the legal representative of his law firm (“in the name of “XY Patentanwälte GmbH”, “for and on behalf of XY LLP” etc.) this is commonly understood to mean that the representative signs in the name of the party that is represented. The way in which the law firm is organised is not relevant for the EPO, even if the representative is member of an association pursuant to R 152(11) EPC. From the point of view of the EPO an association of representatives is only a plurality of representatives who can be authorised to act in the name of a represented party to the proceedings, either jointly or singly (see R 152(10)).

[7] The appellant’s request is directed at being entered, as a member of an association, into the list of associations maintained by the EPO. Entries into this list are made upon request of the representatives desiring to form an association. The list is not published by the EPO but is only maintained as an internal tool. Whether a representative has proven, within the meaning of R 152(11), that he acts within a certain association has to be checked on a case-by-case basis. The internal list is a useful tool for providing evidence but it is not constitutive in the sense that a representative listed as a member of the association is necessarily deemed to be authorised if the association has been authorised.

[8] In the case of a LP who wishes to exercise his right to represent [a party] pursuant to A 134(8) the EPO checks on a case-by-case basis whether the requirements mentioned in those provisions are fulfilled (qualification in a Contracting State, place of business in that State, entitlement in that State to act as a professional representative in patent matters). In the case of a professional representative it is not necessary to check whether he is in principle entitled to act before the EPO because the EPO itself maintains a list of professional representatives that are entitled to represent [parties] (A 134(1)). When the result of said check is positive for a LP, the latter is entered into a list which the EPO maintains as an unpublished internal tool, very much like the list of associations of representatives.

[9] Against this background, the Board comes to the conclusion that a LP can represent [parties] before the EPO “in the same way as a professional representative” and that A 134(8) is not violated when only professional representatives can form an association pursuant to R 152(11). The existing differences in the administrative procedures are based on the one hand, on the closer relationship between professional representatives and the EPO (see point [3.2] above) and on the other hand, on the different provisions governing the presentation of authorisations (see below).

[10] R 152, which is entitled “Authorisations” concerns both the substantive authorisation (die materiellrechtliche Bevollmächtigung) and the presentation of signed authorisations (unterzeichnete Vollmachten) filed as evidence for the existence of such an authorisation. In principle there may be an authorisation even if no authorisation form has been signed and filed. However, if a required authorisation is not filed in due time, then any procedural steps taken by the representative, other than the filing of a European patent application, shall be deemed not to have been taken (R 152(6)). This legal fiction results in a representative losing his authorisation if he does not comply with the provisions governing the filing of authorisations.

[11] If a LP who is entitled to represent [a party] before the EPO became a member of an association of representatives, then he would be authorised – via the legal fiction of R 152(11) – to carry out all actions which the association is authorised to carry out. Under the present regulations in Article 2 of the DecFilAuth each LP entitled to act before the EPO has to file a signed authorisation or a reference to a general authorisation already on file. If the authorisation is not filed, the EPO has to invite the LP to do so (Article 2, second sentence of the DecFilAuth; R 152(2)). If the authorisation is not filed in due time, then the authorisation is lost (see point [10] above; R 152(6). If R 152(11) was understood to mean that LPs can be members of an association of representatives, then these LPs on the one hand, would be deemed to be authorised via R 152(6) and, on the other hand, be deemed not to be authorised via the provisions governing the filing of authorisations, if they do not file an authorisation. Under the applicable normative provisions governing the filing of authorisations (see point [2.8] above) – which do not provide for any exception from the duty to file [authorisations] that would be applicable to associations comprising LPs (see point [2.4] above) – this contradiction can only be eliminated via an interpretation of R 152(11) that interprets the association of representatives to be an association of professional representatives. Therefore, LPs cannot avail themselves of the legal fiction of R 152(11), which means that the appeal has to be dismissed.

[12] The appellant acknowledged that the admission of LPs into associations pursuant to R 152(11), which he desired, was at conflict with the applicable rules governing the filing of authorisations. However, he was of the opinion that the relevant decision of the President (see point [2.2] above) was a mere administrative instruction which had to be measured by A 134(8) and R 152(11). In any case, the DecFilAuth was not of higher rank in the hierarchy of norms than the DecInt of the AC and the corresponding ComMatRep (OJ EPO 1979, 92 see point [2.5] above). The Board cannot endorse this opinion; it is, for the reasons mentioned above (see points [2.3] and [2.8]) bound by the DecFilAuth, which has been taken in application of R 152(1).

[13] The appellant pointed out, in the statement of grounds of appeal already, that R 152(11) as well as the other provisions of R 152 only referred to “representatives” and did not distinguish professional representatives from LPs. The Board is of the opinion that the term “representative” needs to be interpreted. In the DecFilAuth based in R 152(1) a distinction is made between professional representatives and LPs (see point [2.2] above). This distinction has an impact on other provisions of R 152. For instance, the reference to a “required authorisation” in R 152(6) contains an implicit reference to the DecFilAuth, which entails that the legal consequences of R 152(6) occur under circumstances that differ according to which professional group is concerned. Also, in the present legal situation, the consideration of the whole context of R 152 leads to the conclusion that the two professional groups are to be treated differently as far as R 152(11) is concerned (see point [11] above).

[14] It may remained unanswered to which extent the Legal Division considers the DecInt of R 101(9) EPC 1973 and R 152(1), respectively, to be still relevant. However, the Board notes that the third criterion established by the EPO in its Communication interpreting the Decision of the AC of the European Patent Organisation, according to which only professional representatives may act in the name of the association in business matters ([…] confirmed in J 16/96 [4.3]) apparently has not been observed in practice, for quite some time. There are persons who are neither professional representatives nor LPs but who nevertheless act, even in the name of the very association of which the appellant wishes to be member. Insofar the procedure for registering associations does not correspond to the procedure set forth in the ComMatRep (OJ EPO 1979, 92, see point [2.7]) any more. […]

The appeal is dismissed.

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


Dan said...

The EPO has announced that the decision taken by the Administrative Council at its fourth meeting (19 to 21 December 1978) relating to the interpretation of the term "association of representatives" under Rule 101(9) EPC 1973 (Rule 152(11) EPC), namely that it means an association consisting solely of professional representatives in private practice, is abrogated.
(CA/D 9/13)