Pages 561-571

BOARDS OF APPEAL

Decisions of the Disciplinary Board of Appeal

Decision of the Disciplinary Board of Appeal dated 5 June 1996 - D 14/93

(Translation)

Composition of the Board:

Headword: Training period under the supervision of a legal practitioner who is also a patent attorney under national law

Article: 9, 133(3), 134(1), (2), (7) and (8)(a) EPC

Article: 10 of the Regulation on discipline for professional representatives (RDR)

Article: 7(1), 23(4) of the Regulation on the European qualifying examination for professional representatives before the EPO (REE, 1991 version)

Headnote

The training period pursuant to Article 7(1)(b) REE 1991 for enrolment for the European qualifying examination cannot be served with a legal practitioner whose name does not appear on the list of professional representatives, even if the said legal practitioner is also a patent attorney under national law.

Summary of facts and submissions

I. By letter of 25 February 1993 the Examination Board informed the appellant that his application to sit the 1993 European qualifying examination was refused, on the grounds that he had not completed the requisite three years' service with a professional representative.

In this decision the Board said a training period under the supervision of a legal practitioner entitled under Article 134(7) EPC to act before the EPO did not count. The training periods it recognised were set out exhaustively in Article 7(1)(b) REE as then in force (hereinafter REE 1991, published in OJ EPO 1991, 79), and it had no discretion to admit a candidate who had not served such a period.

II. The appellant appealed against this decision, arguing that the REE 1991 was in breach of the EPC, under whose Article 134(7) a legal practitioner could act in EPC proceedings in the same way as a professional representative and to the same extent that he (the legal practitioner) was entitled to do so nationally.

III. Oral proceedings were arranged for Tuesday, 22 November 1994. On 21 November 1994, a member of the present board (a professional representative) informed the Registry that for health reasons he was unable to attend said proceedings. At 10.32 hrs that day the Registry thereupon advised the appellant by fax that the oral proceedings scheduled for 22 November 1994 were postponed - by which time however the appellant was already on his way to Munich by train.

IV. By letter of 20 December 1994, the appellant requested reimbursement of costs incurred as a result of the postponement.

V. Oral proceedings were held on 5 June 1996.

VI. The appellant's main arguments, presented in written submissions and at the oral proceedings, were as follows:

• Under Article 134(7) EPC, professional representation in proceedings established by the EPC could also be undertaken, in the same way as by a professional representative, by any legal practitioner qualified in a contracting state and having his place of business in such a state, to the extent that he was entitled, in the said state, to act as a professional representative in patent matters.
• Training candidates to sit the European qualifying examination under Article 134(8)(a) EPC constituted "proceedings established by the EPC", and could therefore be performed by a legal practitioner covered by Article 134(7) EPC, to the extent that he was entitled to do so nationally.
• On a strict interpretation of the German wording of Article 134(7) EPC, it might be argued that only direct "representation of clients" was covered as an equivalent activity. However, this was not so. The provision expressly used the definite article ("den"); it therefore meant all EPC proceedings, and had to be read as "exercise of the profession as a whole". This broad interpretation was supported by the English and French versions. A legal practitioner thus had to be placed on the same footing as a professional representative in respect of all the aspects which together comprised exercise of the patent profession.
• At national level, training the next generation by passing on the benefits of their practical experience was a self-evident part of the job of both legal practitioners and patent attorneys, so here too the former had to be placed on exactly the same footing as the latter. Failure by the REE to do so would be in breach of the principle of equal treatment enshrined in Article 134(7) EPC.
• Under the Examination Board's interpretation of the REE 1991, legal practitioners were worse placed even than company employees enitled to act for their employers under Article 133(1) and (3) EPC. The entitlement of such employees to train under Article 7(1)(b)(ii) and (iii) REE 1991 must mean that legal practitioners were also thus entitled, particularly since Article 134(7) EPC placed the latter on the same footing as professional representatives, ie with more representation rights than company employees.
• Article 7(1)(b)(iii) REE 1991 was therefore to be applied mutatis mutandis to the present case. It was immaterial that the person under whose direct supervision he (the appellant) had trained had been acting not just as an employee on behalf of a single employer but for a variety of different clients before the EPO. Moreover, that person was a German legal practitioner, and entitled as such to train prospective patent representatives in Germany - which seemingly he was not allowed to do for European proceedings. This was not the sense of Article 134(7) EPC. The condition laid down in sub-paragraph (i) of Article 7(1)(b) REE 1991 therefore had to be so interpreted that what applied at national level applied also for the EPC. The omission of legal practitioners under Article 134(7) EPC from Article 7(1)(b) REE 1991 could only be an oversight by the REE, there being no reason not to treat all "practitioners before the EPO" in the same way.
• Article 134(8)(a) EPC empowered the Administrative Council only to enact rules on qualifications and training, ie on quality yardsticks, not to flout the EPC by arbitrarily accepting some trainers but not others. In adopting the REE 1991 the Administrative Council had contravened the EPC, by setting stricter criteria for admission to the European qualifying examination than envisaged by Article 134 EPC.
• If he (the appellant) had been admitted to the examination in good time, he would not have had to pay the examination fee twice. One fee should therefore be refunded.
• When the November 1994 oral proceedings were cancelled at short notice because a board member was ill, he (the appellant) had incurred needless travel expenses; these should be reimbursed. The Disciplinary Board of Appeal should have ensured that a suitable replacement judge was available.

VII. The appellant requested that

(a) the Examination Board's decision be set aside, and his training period under the supervision of a German legal practitioner and patent attorney be held to fulfil the requirements of Article 7(1)(b) REE 1991;

(b) the DEM 800 examination fee paid on 24 November 1993 be refunded;

(c) travel costs of DEM 520.10 incurred on 21 and 22 November 1994 be reimbursed;

(d) the fee for appeal be refunded.

Reasons for the decision

1. Article 7(1)(b) REE 1991 reads as follows:

"Candidates may request enrolment for the European Qualifying Examination on condition that:

(a) ...

(b) they are able to satisfy the Board that, at the date of the examination, they have:

(i) completed a full-time training period of at least three years in one of the Contracting States under the supervision of one or more persons entered on the list referred to in Article 134, paragraph 1, of the European Patent Convention, and have during this period taken part as an assistant to that person or those persons in a wide range of activities pertaining to European patent applications or European patents; or

(ii) worked full-time for a period of at least three years in the employment of a natural or legal person whose residence or place of business is within the territory of one of the Contracting States and have represented their employers before the European Patent Office in accordance with Article 133, paragraph 3, of the European Patent Convention while taking part in a wide range of activities pertaining to ... ; or

(iii) worked full-time during a period of at least three years as an assistant to and under the direct supervision of one or more persons as defined in sub-paragraph (ii) in a wide range of activities pertaining to ... ."

To be admitted to the European qualifying examination, a candidate must thus fulfil at least one of the above three conditions.

2. In the appellant's opinion, the failure of Article 7(1)(b) REE 1991 to provide for practical training to take place under the supervision of a legal practitioner is in breach of the principle, enshrined in Article 134(7) EPC, of equal treatment between legal practitioners and professional representatives (Article 134(1) EPC). He therefore argues that Article 7(1)(b)(iii) REE 1991 should be applied mutatis mutandis in the present case. The Board would comment as follows:

2.1 The activities referred to in Article 7(1)(b) REE 1991 presuppose scientific or technical knowledge. Persons under whose direction or immediate supervision a candidate takes part as an assistant in a wide range of such activities must therefore also possess such knowledge, to be able to train him eg to draft European patent applications, replies to communications from EPO examining divisions and notices of opposition against European patents.

2.2 Persons whose name appears on the list of professional representatives (Article 134(1) EPC) and have passed the European qualifying examination possess scientific or technical knowledge, because under Article 7(1)(a) REE 1991 evidence of such knowledge is a condition for admission to the examination. Practically all persons entered on the list under the special provisions of Article 163 EPC may also be assumed to possess such knowledge. And employees within the meaning of Article 7(1)(b)(ii) REE 1991 who act on behalf of their employers will generally also possess such knowledge. Legal practitioners on the other hand do not normally possess the scientific or technical knowledge required with a view to activities pertaining to European patent applications and patents.

2.3 Under Article 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 (point 2.2 above). By way of exception, Article 134(7) EPC 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. It does not however follow from this that a legal practitioner has the same entitlement as a professional representative also to train candidates under Article 7(1)(b)(i) REE 1991.

2.4 The objective of the list of professional representatives is to provide a survey of particularly qualified representatives in patent matters; it would be jeopardised if legal practitioners without such qualifications were included on the list (see "Communication in matters concerning representation before the EPO" [OJ EPO 1979, 92; point 4]). Accordingly, the conditions for entry on the list of professional representatives under Article 134(2) EPC also apply to legal practitioners. Article 134(7), second sentence, EPC is no impediment to this.

2.5 Article 7(1)(b) REE 1991 governs the training a person must undergo in order to be admitted to the European qualifying examination. It indicates that professional representatives (Article 134(1) EPC) and employees within the meaning of Article 133(3) EPC can act as trainers, whereas legal practitioners (not on the list of professional representatives) cannot. This is an appropriate and balanced arrangement, because it takes account of the fact that a central role in this training is played by scientific and technical knowledge which a legal practitioner does not normally have (point 2.2 above). Nor is it in breach of Article 134(7) EPC, because the equal treatment that provision requires relates only to proceedings established by the EPC, ie conducted before the departments referred to in Article 15 EPC. This means that training candidates under Article 7(1)(b) REE 1991 does not constitute "proceedings established by the EPC" within the meaning of Article 134(7) EPC.

2.6 Legally speaking, an employee of a natural or legal person acting in EPC proceedings on behalf of his employer under Article 133(3) EPC is not representing that person, who rather is acting himself through the employee. It may be assumed that an employee acting on behalf of a natural or legal person on the basis of an authorisation (Article 133(3) EPC) has patent-law, scientific and technical knowledge comparable with that of a professional representative. It is therefore justified that such employees can also act as trainers, like professional representatives.

2.7 The reason for requiring evidence of practical training is to ensure that only those candidates are admitted to the European qualifying examination as may be assumed, in view of their experience, to have prospects of passing it. That experience has to be evaluated by type, there being no possibility in an admission procedure of ascertaining the quality of training in individual cases. The legislator has decided that practical experience is to be recognised for admission purposes if acquired in connection with a wide range of activities pertaining to European patent applications and patents in the professional representative's office or in the patent department of a firm in a contracting state. The reason this is an appropriate arrangement is that practical work pertaining to European patent applications and patents is concentrated at such offices and departments, which are therefore the places where the requisite experience is most readily acquired. The appellant is therefore incorrect in arguing that Article 7(1)(b) REE 1991 is in breach of Article 134(8)(a) EPC.

2.8 It is of course quite possible that individual legal practitioners may also be able to pass on qualified knowledge about processing European patent applications and patents. However, given the "evaluation-by-type" approach which is justified for admission purposes (point 2.7 above), it is not possible to investigate whether an individual place of training is likely to provide a suitable preparation for the examination. The Board does not therefore agree with the appellant that it would be appropriate to apply Article 7(1)(b)(iii) REE 1991 mutatis mutandis to the present case.

2.9 Irrespective of his specialist qualifications and powers of representation in national patent matters, a patent attorney under national law cannot be regarded as a "legal practitioner" within the meaning of Article 134(7) EPC, and therefore is not entitled to act as a professional representative before the EPO (J 19/89, OJ EPO 1991, 425). The appellant therefore errs in thinking that the condition under Article 7(1)(b)(i) REE 1991 is to be interpreted to the effect that what applies at national level applies also for the EPC.

The overall conclusion from the foregoing is that the appellant's request (a) cannot be allowed.

3. The law makes no provision for the Disciplinary Board of Appeal to refund the examination fee in appeal proceedings; this is thus not possible. Request (b) must therefore be refused.

The contested decision did in fact point out (under its point 7) that the fee is refundable on request once the decision becomes final.

4. Under Article 10(1) of the Regulation on discipline for professional representatives (RDR, published in OJ EPO 1978, 91), the Disciplinary Board of Appeal consists of three legally qualified members of the EPO and two professional representatives (Article 134(1) EPC). Under Article 10(2) RDR, the professional representative members are selected from a list proposed to the Administrative Council by the Board of the Institute of Professional Representatives before the EPO (Article 26 ff EPC) and appointed by the Council for a five-year term.

Since 1 January 1994, the Disciplinary Board of Appeal has had seven members from the profession, namely one each from France, Greece, Italy, the Netherlands, Sweden, Switzerland and the United Kingdom (see Notice concerning the composition of the Enlarged Board of Appeal and the boards of appeal of the EPO [OJ EPO 1994, 66, 73; 1995, 64, 72; 1996, 87, 94]). They are not EPO employees, but live and work in the contracting states mentioned. This fact, and geographical distance, mean that such a member cannot normally be replaced for oral proceedings when - as in the present case, where he was unable to attend because of sudden illness, ie force majeure - the reason is not known until the day before the oral proceedings.

Contacted by telephone on 21 November 1994 by the member in question, the Disciplinary Board of Appeal Registry at once faxed the appellant to inform him that the oral proceedings scheduled for 22 November 1994 had been postponed. This fax reached the appellant's office at 10.32 hrs on 21 November 1994. That by then the appellant had already left and could no longer be contacted is regrettable, but cannot be considered the result of an omission on the part of the Disciplinary Board of Appeal, which did everything in its power to advise him of the postponement in time.

To the extent that the basis for the appellant's request for reimbursement of travel costs is his view that the Disciplinary Board of Appeal was organisationally at fault because no suitable replacement judge was on hand, the Board would point out that neither the EPC nor any other text offers a legal basis for the Disciplinary Board of Appeal to entertain claims for compensation against the EPO in respect of damages allegedly incurred in proceedings before said Board (see Article 9 EPC; J 14/87, OJ EPO 1988, 295).

The overall conclusion from the foregoing is that request (c) cannot be allowed.

5. As the appeal is dismissed as unfounded, the appeal fee cannot be refunded (see Article 23(4), third sentence, REE 1991).

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for a refund of the appeal fee is refused.

3. The request for a refund of the qualifying fee for the European qualifying examination is refused.

4. The request for reimbursement of the travel costs is refused.