5.4. Oral submissions by qualified patent lawyers of non-EPC contracting states

Another question of law decided in G 4/95 was whether, having regard in particular to the provisions of Art. 133 and Art. 134 EPC 1973, a person who was not qualified in accordance with Art. 134 EPC 1973 but was a qualified patent lawyer in a country which was not an EPC contracting state might present some or all of a party's case as if he were qualified under Art. 134 EPC 1973. The Enlarged Board decided that no special criteria applied to the making of oral submissions by qualified patent lawyers of countries which were not contracting states to the EPC. The criteria set out above were equally applicable to such patent lawyers(see T 774/05 with respect to "US patent attorney").

In case T 756/09, the request for oral submissions by Dr M, an Australian patent attorney, was made only ten days before the oral proceedings and the appellant (opponent) had denied its agreement both in writing and at the beginning of the oral proceedings. In support of its request, the respondent (patent proprietor) essentially submitted that Dr M would not make submissions in the capacity of a technical expert, but as a patent attorney who was very familiar with the case, had advised the professional representative before the oral proceedings and would continue to do so during the oral proceedings. Taking into account the circumstances of the case, in particular that Dr M was not a technical expert and thus was not expected to elaborate on technical aspects of the case in a manner which might take the appellant by surprise, the board concluded that submissions made directly by Dr M under the supervision of the professional representative would not put the appellant (opponent) at a disadvantage and might contribute to an efficient debate. Hence, despite its late filing, the board decided to accede to the respondent's request for oral submissions by an accompanying person with the proviso that such submissions would be stopped if new technical facts or arguments were introduced into the debate.