4.6. Legal incapacity of a representative from outside the contracting states

In J 23/88 the Legal Board accepted the finding of the Receiving Section that an American patent attorney was not covered by R. 90(1)(a) EPC 1973 (R. 142(1)(a) EPC), being neither the applicant nor the proprietor of a European patent, nor a person authorised by national law to act on his behalf. "Person authorised by national law" covered legal representatives of the applicant or proprietor, but did not extend to a patent attorney authorised under the laws of a non-Contracting State. However, the board held that the US patent attorney in the case in hand was, at the relevant time, a legally incapacitated representative of the applicant within the meaning of R. 90(1)(c) EPC 1973 (R. 142(1)(c) EPC). This interpretation was fully consonant with the preparatory documents regarding the desirability of equal treatment of applicants from contracting and non-contracting states. The difference in the wording of R. 90(1)(c) EPC 1973 (R. 142(1)(c) EPC) from that of R. 90(1)(a) EPC 1973 (R. 142(1)(a) EPC) was deliberately chosen so as to create equal treatment between applicants in the contracting and in non-contracting states. The board observed that Art. 133(2) EPC 1973 provided a limited exception to the normal requirement for professional representation within the meaning of Art. 134 EPC 1973 in the case, and only in the case, of the filing of the European patent application. Such a filing could validly be made by the applicant himself or by any representative duly authorised by him. Once the processing of the international application had properly started in the EPO, any interruption in proceedings occasioned by the death or legal incapacity of the American patent attorney would no longer be covered by R. 90(1)(c) EPC 1973.