A recent decision by the EPO’s Boards of Appeal, T 1846/11, concerns an appeal filed by Rigaku Corporation (appellant) against the decision of the examining division, refusing European patent application no. 04012578.3.

This decision deals with the importance of ensuring that correct authorisations are obtained for legal practitioners to act on behalf of an applicant in EPO proceedings.

The European Patent Convention (EPC) draws a clear distinction between professional representatives (ie qualified European Patent Attorneys) and legal practitioners (qualified practitioners in a contracting state who are entitled to act in patent matters and having his place of business in that state). Examples of legal practitioners include Rechtsanwalt in Germany and solicitors and barristers in the UK. Under the EPC, legal practitioners may represent an applicant in proceedings before the EPO in the same way as professional representatives as long as the relevant authorisation is obtained from the applicant and submitted at the EPO.

Turning to the decision in hand, this application was filed on 27 May 2004, indicating a firm of Patent and Trade Mark Attorneys as the representatives. No signed authorisation or reference to a general authorisation was filed.

In the course of proceedings before the Examining Division, a legal practitioner at the firm started acting on behalf of the applicant from 19 November 2010. This included attendance at oral proceedings held on 22 January 2016. At the start of these proceedings, the legal practitioner was asked to present a signed authorisation or reference to a general authorisation, in accordance with the decision of the President of the EPO dated 12 July 2007, which sets out that:

Legal practitioners entitled to act as representatives under Article 134(8) EPC must file a signed authorisation or a reference to a general authorisation already on file. If the European Patent Office is informed of the appointment of a legal practitioner without an authorisation being filed, the practitioner shall be requested to file the authorisation within a period to be specified by the European Patent Office.

The legal practitioner was unable to provide the required authorisation during the oral proceedings. In light of this, on 5 February 2016, the Board issued a communication, inviting the legal practitioner to file an authorisation.

In response to this communication, the legal practitioner filed a duly signed general authorisation dated 8 April 2016, which listed the legal practitioner in question as one of the authorisees and also included a statement in the form of a stamp indicating that the specific firm of Patent and Trade Mark Attorneys was authorised to act on behalf of the applicant as of 1 October 2010.

The legal practitioner explained that previous authorisation of 1 October 2010 had been given at the time when he took over responsibility but had been misplaced.

Whilst the Board was satisfied that the general authorisation filed by the legal practitioner allowed him to act on behalf of the appellant, it considered that he was only authorised to do so from 8 April 2016, and not from 1 October 2010. In particular, the Board stated that since the previous authorisation of 1 October 2010 was not on file, it was not possible to verify whether the legal practitioner had been authorised by a signed authorisation as from 1 October 2010. Furthermore, the wording of the statement in the general authorisation indicated that only the EPO representatives of the firm of Patent and Trade Mark Attorneys were authorised, ie an association of representatives according to Rule 152(11) EPC, which did not include legal practitioners.

Notwithstanding the above, given the specific circumstances of the present case, where a general authorisation dated 8 April 2016 was on file and the previous authorisation had allegedly been misplaced, the Board indicated that if the appellant's subsequent approval was filed, it would exceptionally accept the procedural steps taken by the legal practitioner as representative in the period from 1 October 2010 to 8 April 2016. However, the legal practitioner did not file such an approval.

The Board therefore concluded that the legal practitioner was only authorised to act on behalf of the appellant from 8 April 2016 and as such, procedural steps taken by the legal practitioner as the representative during the period from 1 October 2010 to 8 April 2016 were deemed not to have been taken. This included the notice of appeal filed by the legal practitioner which was deemed not to have been filed.

The Board acknowledged that this decision may appear “formalistic and harsh”. However, it emphasised that the filing of an authorisation is of fundamental importance for establishing whether the EPO is dealing with the entitled representative.

This decision emphasises the importance of ensuring that the appropriate authorisations are always obtained from applicants in order to avoid the circumstances set out in this decision.