Monday, 17 June 2013

T 637/09 – No Reason To Doubt

In this case the patent proprietor questioned the authorisation of one of the professional representatives of the opponent:

[1] With letter dated 2 November 2012, the [opponent] informed the board and the [patent proprietor] that Mr S., a professional representative, would represent the [opponent] jointly with Mr M., the professional representative already acting on behalf of the [opponent]. Mr S.’s entitlement to act as a representative for the [opponent] was contested by the [patent proprietor] at the beginning of the oral proceedings. The [patent proprietor] argued that the authorisation dated 2 November 2012 did not indicate the signatorys name and entitlement to sign contrary to the requirements set out on the reverse side of EPO Form 1003.

As can be inferred from R 152(10), a party may be jointly represented by several representatives. The question to be decided is whether the communication of Mr S.’s appointment by letter dated 2 November 2012 together with a copy of an authorisation signed by two employees of the [opponent] entitled Mr S. to act as joint representative for the [opponent] in the present appeal proceedings.

Professional representatives who identify themselves as such are required pursuant to R 152(1) together with Article 1 of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations (OJ EPO 2007, Special edition No. 3, 128; hereinafter “decision”) to file a signed authorisation in particular cases only. On the one hand, the filing of a signed authorisation (original and one copy) is required in the event of a change of representative involving professional representatives who are not members of the same association (Article 1(2) of the decision). On the other hand, the EPO may require an authorisation to be produced if the circumstances of a particular case necessitate this, particularly in case of doubt as to the professional representative’s entitlement to act (Article 1(3) of the decision).

The appointment of Mr S. as joint representative is not a change of representative within the meaning of Article 1(2) of the decision. Thus, in order to represent the [opponent], Mr S. was not required to file a signed authorisation on the basis of Article 1(2) of the decision.

The [patent proprietor], however, argued that no indication of the signatories’ names and of their entitlement to sign was given in the authorisation dated 2 November 2012 appointing Mr S. It was therefore doubtful whether the signatories were entitled to sign the authorisation, either by law or in accordance with the articles of association or equivalent of the [opponent]. An authorisation bearing the signature of persons not entitled to sign was not valid.

In view of documents D66 to D68 submitted by the [opponent] on 4 December 2012, the board had however no reason to believe that the signatories of the authorisation dated 2 November 2012 were not empowered to appoint Mr S. as representative for the [opponent]. Consequently, the board also had no reason to doubt Mr S.’s entitlement to act for the [opponent]. The circumstances of the particular case thus did not necessitate the production of a (further) authorisation in accordance with Article 1(3) of the Decision of the President of the EPO dated 12 July 2007. The board thus concluded that Mr S. was duly authorised to represent the [opponent] in addition to Mr M.

The [patent proprietor] also referred to the communication on matters concerning representation before the EPO (OJ EPO 4/1978, 281) cited on the reverse side of EPO Form 1003. Leaving aside the question of whether this communication is still applicable in view of Article 7(1), second sentence, of the Revision Act of 29 November 2000 and the decisions of the Administrative Council of 28 June 2001 (OJ EPO 2007, Special edition No. 1, 197) and 7 December 2006 (OJ EPO 2007, Special edition No. 1, 89), it certainly does not impose stricter requirements on professional representatives regarding the communication of their appointment in proceedings before the EPO than the decision referred to above.

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

The file wrapper can be found here.


DT said...

I am enclined to consider the statements of the Board re Mr S. acting as second representative, as an attempt to evacuate the problem which was created at the beginning of the Oral Proceedings by the proprietor in view of Mr S.'s appointment as further representative. The problem was created by the Registrar not acting properly.

When you look at the power of attorney, it is clear that it bears two signatures. There is however no indication whatsoever in which quality the two persons signed, i.e. whether or not they were actually entitled to sign the power of attorney. It is only the first representative who stated that they were legal representatives for the opponent. No proof of this has ever been submitted.

If the first representative would have filed a power of attorney when he filed the opposition (which he was not obliged to), this situation could haven resolved by looking at the original power of attorney. If the two persons were mentioned there, no reason to inquire further.

In the absence of such a document, the proprietor indeed had a point. He cannot be blamed by keeping the matter up to the day of the OP. Both representatives for the opponent should have made sure that the power of attorney for the the second one was complete and correct. Either at least a company stamp, or en excerpt of the register of commerce (the better solution) showing that the two signatories are entitled to act for the company should have been filed. I do not mean that the second attorney acted in bad faith, he would certainly not turn up at an OP without being paid, but this is not the point. It has to be legally correct.

Such a power of attorney without any indication about the quality of the signatories should have been queried by the registrar when it was filed. As this was not done and confronted at the beginning of the OP with the problem of the power of attorney of Mr S., it was important for the Board to evacuate the problem one way or an other. In the contrary, the Board would have committed a substantial procedural violation by letting somebody speak who was not properly entitled to do so.

The situation at stake is classical one when it come to Oral Proceedings in opposition. The first representative brings in a second representative from a different firm, whereby the latter is more experienced in OP that the one who dealt with the written procedure.

In such a situation Art 1(3) of the Decision applies fully, whatever the present Board might say. In the present situation doubts are clearly justified. art 1(3) would not apply if the first representative would have had the power to give sub-authorisations. As there is no power of attorney from the first representative on file, this possibility is not applicable.

The only point on which one can agree is that Art 1(2) was not of application. The Board was, let's say innovative, in the matter.

I would not encourage parties filing such power of attorneys, which I repeat should be queried when it is not possible to know in which quality it was signed.

Although the Boards of Appeal are not bound by the Guidelines, I would like to draw your attention to the Guidelines E-II-8.3.1 Checking of authorisations at the beginning of the OP which states: "Authorisations need be checked only if a party is represented by a person whose authorisation is not apparent from the file". It is difficult to say that the power of attorney is apparent from the file, when nothing is said about the quality of the signatories. An Opposition Division would not have had the possibility to dodge the problem as the Board did.

It would rather consider this decision as a one off, but certainly not for a representative a way to act correctly and professionally. And I would not be surprised if a Board would decide in appeal that an Opposition Division had committed a substantial procedural violation in accepting such an authorisation.

To sum it up: in the situation of T 637/09, there are strong reasons to doubt.