3. Legal practitioners entitled to act as professional representative
3.1. General issues
According to Art. 134(1) EPC, professional representation of natural or legal persons in proceedings established by the EPC may only be undertaken by professional representatives whose names appear on the above list. However, Art. 134(8) EPC (former Art. 134(7) EPC 1973) provides that professional representation in such proceedings may also be undertaken, in the same way as by a professional representative, by any legal practitioner qualified in one of the contracting states and having his place of business within such state, to the extent that he is entitled, within the said state, to act as a professional representative in patent matters. The arrangements for legal practitioners set out in Art. 134(8) EPC therefore constituted an exception.
In J 8/10 (OJ 2012, 472), the board observed that, if a legal practitioner wishes to act under Art. 134(8) EPC, the EPO considers whether he meets the conditions of that provision (i.e. is qualified in a contracting state and has his place of business and the right to act as a professional representative in patent matters in that state). If the legal practitioner fulfils the conditions, the EPO enters his name on a list which – like the list of associations of representatives – it keeps as an internal working tool and does not publish.
In J 19/89 (OJ 1991, 425) it was observed that the last clause of Art. 134(7), first sentence, EPC 1973 (Art. 134(8) EPC) prevented a "Rechtsanwalt", "legal practitioner" or "avocat" from having more extensive powers of representation before the EPO than he was entitled to before his national patent office. Art. 134(7) EPC 1973 was therefore a special rule limited in scope to the corpus of legal practitioners, which existed under various designations in all the contracting states.
In J 18/99 the board pointed out that under the current Spanish law, any legal practitioner qualified in Spain and having his place of business in Spain was entitled to represent clients in patent matters before the Spanish Patent and Trademark Office if he presented an authorisation from the party.