In a decision published by the Federal Patent Court on 13 January 2022,(1) the Court clarified the requirements for the proof of authorisation of a domestic representative.
In proceedings at the Federal Patent Court and the German Patent and Trademark Office (GPTO), parties who do not have a residence, a principal place of business, or an establishment in Germany must be represented by a domestic representative. The domestic representative can be a patent attorney or a lawyer and must be authorised to represent their client.
Proof of such authorisation is made by filing an authorisation document, which must be signed by the client or a person entitled to act on their behalf. However, the GPTO and the Federal Patent Court need only consider any deficiencies in the authorisation of a patent attorney or lawyer when they are asserted by another party, which can be done at any stage in the proceedings.
Since a lack of valid authorisation can adversely affect the ability of a representative to act on behalf of their client, parties sometimes try to delay proceedings by asserting deficiencies in the authorisation of their counterparty's representative. This can result in disputes.
The Federal Patent Court decision concerned an appeal against a GPTO decision on an opposition to a national German patent. The opposition and the appeal had been filed by a Spanish company, the domestic representative of which was a German patent attorney.
During the opposition proceedings, the opponent had changed its name and legal form. The patentee contended that the opponent had not provided evidence that its status had been transferred, and asserted that the opponent's representative did not have authorisation to represent it.
In the appeal proceedings, the representative of the opponent filed:
- a new domestic representative authorisation signed by the head of the legal department of the opponent (the original document);
- a copy of a notarial deed confirming the authorisation of the head of the legal department by the director of the opponent; and
- an excerpt of the commercial register confirming the position of the director.
The Court considered the filed documents to be sufficient evidence of the domestic representative's authorisation. According to the Court, it would violate the opponent's right to effective legal protection if complete evidence for the chain of authorisation leading to the domestic representative in the form of original documents was required. The Court held that the requirement to enable effective legal protection and a fair trial prohibited the Court from unreasonably reducing the enforcement of substantive law by imposing excessively strict requirements for the proof of authorisation.
Further, the Court decided that the requirements for the proof of authorisation would not be increased by a patentee's assertion of a deficiency in the authorisation of the opponent's representative. According to the Court, it was obvious that the patentee in this case had raised its objection out of the blue and without any factual reason other than to delay the Court's decision. The Court considered this to be an abuse of proceedings that should not be rewarded with any advantage.
The Federal Patent Court has decided that, as a general rule, it is sufficient for a representative to submit the original version of the document that authorises them to act at the Court and to file copies of other documents and excerpts of registers confirming the chain of authorisation. This also applies to cases in which the counterparty asserts deficiencies in the authorisation where such assertion is made without specific evidence and obviously only for the purpose of delaying the proceedings and hindering a decision on the merits of the case.
While the decision relates to proceedings at the Federal Patent Court, it is expected that it will also be relevant for proceedings at the GPTO.
For further information on this topic please contact Martin Ahr at Grünecker by telephone (+49 89 21 23 50) or email ([email protected]). The Grünecker website can be accessed at grunecker.de.