Pages 45-54

BOARDS OF APPEAL

Decisions of the Disciplinary Board of Appeal

Decision of the Disciplinary Board of Appeal dated 17 March 1997 - D 25/96

(Translation)

Composition of the Board:

Headword: Period of professional activity

Article: 10(2)(a) of the Regulation on the European qualifying examination for professional representatives (REE)

Headnote

The period of professional activity required for enrolment for the European qualifying examination under Article 10(2)(a) REE cannot be completed with a German patent agent working on a self-employed basis who is not entered on the list of professional representatives.

Summary of facts and submissions

I. The appellant wrote to the Secretariat of the Examination Board for the European qualifying examination on 18 July 1995. In his letter he explained that he would be finishing his training as a German patent agent on 30 September 1995, by which time he would have worked for a total of two years and eleven months in the offices of two German patent agents, B and H. His duties involved dealing with a large number of applications and patents before the German Patent Office and the European Patent Office. Detailed supporting evidence would be provided when he applied for enrolment for the examination. He had been accepted for his one-year period of training at the German Patent Office with effect from 1 October 1995. He asked whether he could enrol for the European qualifying examination in March 1996, despite the fact that this one-year period of training would not be confirmed until he had been admitted to the qualifying examination for German patent agents. In the event of his request being turned down, he also asked whether certificates from the German Patent Office confirming activity for a specific period would be accepted and whether work carried out on a freelance basis on behalf of a professional representative ("Kollegenarbeit") would be recognised.

II. In its reply dated 8 August 1995, the Examination Secretariat informed the appellant that he could apply for enrolment for the 1996 qualifying examination. As he had mentioned in his letter, he was four weeks short of meeting the requirements of Article 10(2)(a) of the Regulation on the European qualifying examination (REE, published in OJ EPO 1994, 7). Nevertheless, following careful consideration of his professional career, by way of exception his work at the German Patent Office could be recognised as making up for these four weeks. He was asked to submit, no later than one month before the date of the examination and together with his other documentation, a certificate attesting to his period of activity at the German Patent Office.

III. A cheque for the examination fee, and the supporting evidence for his training, were received on 30 August 1995. The evidence included a "Training or employment certificate in accordance with Articles 10(2)(a), 21(2)(b) REE" on the form provided for this purpose (OJ EPO 1995, 449). It was signed by patent agent B and confirmed that training had taken place from 23 November 1992 to 31 March 1994. A similar certificate signed by patent agent K was submitted for the period from 1 April 1994 to 30 September 1995.

IV. On 2 November 1995 the appellant's attention was drawn to the fact that the period for submission of applications for enrolment was due to expire on 10 November 1995 and that his file still did not contain an application form. In response the appellant enrolled for the 1996 European qualifying examination using the prescribed form (OJ EPO 1995, 447), stating that he was doing so by way of precaution as he had already submitted a request on 28 August 1995.

V. On 6 December 1995 the Examination Secretariat informed the appellant that he would not be allowed to enrol for the examination. Article 10(2)(a) REE requires a period of training of three years under a person whose name is entered on the list of professional representatives. Patent agent B was not on this list, so documentary evidence existed for a period of six months only. In his reply dated 11 December 1995 the appellant said he had never maintained that patent agent B was a professional representative. However, the duties he (the appellant) performed for him nevertheless fulfilled the requirements of Article 10(2)(a)(iii) in conjunction with Article 10(2)(a)(ii) REE.

VI. By a decision of the Examination Secretariat dated 20 February 1996, posted on 22 February 1996, the application for enrolment for the European qualifying examination was refused, on the grounds that the period of training with patent agent B did not fulfil any of the conditions in Article 10(2)(a)(i) and (iii) REE. As far as Article 10(2)(a)(i) REE was concerned, patent agent B was not entered on the list under Article 134(1) EPC. Article 10(2)(a)(iii) REE, however, stipulated that the training period must be spent with a person within the meaning of Article 10(2)(a)(ii) REE. This meant that the person under whose supervision the training period is spent must in turn work for his or her employer in accordance with Article 133(3) EPC. This requirement was not met, as patent agent B worked on a self-employed basis and was not in a contractual relationship with an employer.

VII. On 18 April 1996, the requester filed an appeal and at the same time paid the appeal fee. He provided written grounds for his appeal on 15 May 1996. He also requested that the contested decision be set aside and his period of training with patent agent B be recognised in full, or by way of an auxiliary request that 50% thereof be recognised, or by way of a further auxiliary request, five months thereof. He further requested that the appeal fee be refunded.

VIII. The President of the European Patent Office and the President of the Institute of Professional Representatives before the European Patent Office were given the opportunity to comment. They did not make use of this opportunity.

Reasons for the decision

1. The appeal, which is admissible in accordance with Article 27 REE, is unfounded.

2. The appellant is of the opinion that he should have been allowed to enrol for the examination simply on the basis of the fact that the Examination Secretariat informed him by letter of 8 August 1995 that he would meet the conditions for enrolment if he produced a certificate from the German Patent Office which would justify adding on the missing four weeks. Patent agent B and the Examination Secretariat had allowed him to believe for almost three years that his period of training satisfied the provisions. The Board cannot agree with this view.

2.1 In favour of the appellant, it can be assumed that the principle of the protection of legitimate expectations (G 5/88, OJ EPO 1991, 137, reasons 3.2) which generally applies in proceedings before the EPO is also applicable in proceedings relating to enrolment for the European qualifying examination. There is, however, nothing in the present set of facts to indicate that the appellant could expect that his period of training with patent agent B would be recognised under Article 10(2)(a) REE.

2.2 First of all, the nature of the information given to the appellant by patent agent B is irrelevant. A person enrolling for an examination has to establish for himself what the requirements are for sitting the examination. If there are legitimate doubts, these can be cleared up by the examination authority. Only the latter is authorised to make binding statements about this. If patent agent B gave the appellant the impression that he was authorised to provide training for the European qualifying examination, this may well have consequences as regards contractual relations in the training relationship, but it cannot change the current conditions for enrolment.

Moreover, the appellant submitted only that he had begun training to be a patent agent with patent agent B. If this was possibly the only purpose of the period of training, there was no reason for patent agent B to inform the appellant that this training could not in the present case be taken into account for the purposes of enrolment for the European qualifying examination under Article 10(2)(a) REE.

2.3 From the point of view of the protection of legitimate expectations, the letter of the Examination Secretariat dated 8 August 1995 must be evaluated as follows:

2.3.1 This letter informs the appellant that, to make up for the four missing weeks of training, his work with the German Patent Office could be recognised. The appellant could not conclude from this that the rest of his training period, that is with the exception of the missing four weeks, had been checked and recognised. In this respect the Examination Secretariat makes express reference to the information provided by the appellant when it states, "As mentioned in your letter, you are however four weeks short ...". This shows that the Secretariat did not come to its own conclusions, but rather relied on the correctness of the information provided by the appellant.

2.3.2 Neither could the appellant expect the Examination Secretariat to have checked and confirmed that all the requirements of Article 10(2)(a) REE had been met. The letter of 8 August 1995 is a reply to a question put by the appellant which was expressly linked to the fact that by the time the examination started he would be able to provide supporting evidence that he had completed a training period of two years and eleven months. The question merely related to whether and how the remainder of the time required could be recognised. It was therefore understandable that the Examination Secretariat limited itself to replying to this question.

This is confirmed by the passage in the letter which instructed the appellant to submit the required certificate from the German Patent Office "together with [your] documents" no later than one month prior to the date of the examination. This indicates that these documents had not yet been checked.

2.3.3 In this connection it is irrelevant whether the documents providing evidence of training were submitted, as the appellant maintains, together with the question on 18 July 1995, or only on 30 August 1995. The contents of the examination files would appear to point to the latter date. The letter of 18 July 1995 makes no reference, either expressly or in substance, to any enclosures. On the contrary, it states that supporting evidence for the duties carried out will be provided when the appellant enrols for the examination. The only set of documents in the files which provides evidence of the period of training has a perforated date of receipt of 30 August 1995. If the documents had already been submitted on 18 July 1995, there would have been no reason to submit them again on 30 August. Irrespective of this, no request for enrolment had been made at the time the letter of 8 August 1995 was written. Until such a request was submitted, the Examination Secretariat had no reason to give a final opinion on whether the conditions for enrolment had been met. Instead, it could restrict itself to replying to the appellant's specific question.

2.3.4 Neither can the appellant deduce anything from the passage in the Secretariat's reply, which states that, "after careful consideration of his professional career", the missing four weeks can be recognised. The Secretariat obviously wanted to take a discretionary decision in this case (see 3.3.3 below). This required an assessment of the overall circumstances, ie of the total period of training which the appellant had completed at that time according to his query and which he intended to complete by the time the examination was held. This did not mean, however, that the Secretariat had checked whether the information given in the appellant's letter of 18 July 1995 was correct.

2.3.5 In conclusion, neither had the Examination Secretariat recognised the period of training under patent agent B, nor was there any reason for the appellant to assume on the basis of the circumstances that the Secretariat would recognise it. There is thus no need to look any further into the question as to the specific circumstances under which it would be possible to disregard the obligatory conditions for enrolment on the basis of the principle of the protection of legitimate expectations.

3. The appellant also unsuccessfully opposes the reasons given in the contested decision for denying that the conditions of Article 10(2)(a) REE had been met.

3.1 Under this provision, there are three ways in which to achieve the practical experience required:

• a training period as an assistant to a professional representative (sub-paragraph (i)),
• in salaried employment, and representing one's employer in accordance with Article 133(3) EPC (sub-paragraph (ii)), or
• as an assistant to a person in salaried employment who represents his/her employer in accordance with Article 133(3) EPC (sub-paragraph (iii)).

3.2 In the appeal procedure the appellant no longer put forward the opinion he had expressed in the first instance, namely that, as an employee of patent agent B, he met the criteria of Article 10(2)(a)(iii) in conjunction with (ii) REE. The requirements laid down therein were not met because neither the appellant nor the patent agent B was employed by an employer who utilised the possibility made available to parties established in the contracting states and provided for in Article 133(3), first sentence, EPC, to be represented in proceedings before the European Patent Office by employees.

3.3 The appellant now submits that Article 10(2) REE contains a loophole which must be plugged by the Examination Secretariat and the board of appeal, as the provision is contradictory. He is of the opinion that the emphasis should be on the nature of the training and how it is carried out, not on adhering rigidly to the precise wording of the provision, and that, when it comes to enrolment, there should be a certain amount of discretion as far as recognising other forms of training is concerned if it can be proven that the same level of knowledge has been reached. The Board cannot follow this view.

3.3.1 The knowledge actually acquired by a person submitting a request can only be determined when that person sits the European qualifying examination. The reason for requiring evidence of practical training is to ensure that only those candidates are admitted to the examination who, on the basis of their experience, can be assumed to have a chance of passing it. That experience has to be evaluated by type, there being no possibility in an enrolment procedure of ascertaining the quality of training in individual cases. The legislator decided that practical experience is to be recognised for enrolment purposes if acquired as part of an admissible activity, undertaken on the candidate's own responsibility, in proceedings before the EPO. Thus the forms of training permitted in Article 10(2)(a) REE are connected with the permitted forms of action before the EPO in Articles 133 and 134 EPC. Only professional representatives under Article 134 EPC and parties established in the contracting states in accordance with Article 133(3) EPC may be represented in proceedings before the EPO by their employees. Accordingly, periods of training in these places, ie in the offices of a professional representative or in the patent department of a company with its principal place of business in one of the contracting states, are recognised. The special situation pertaining to legal practitioners whose authority to act as a representative is governed by Article 134(7) EPC does not need to be examined here, as it does not apply.

3.3.2 It is not evident that in doing so the legislator exceeded the broad scope at his disposal. The justification behind this provision is that practical work with professional representatives and in patent departments in industry in the contracting states focuses on European applications and patents and it is therefore in such places that appropriate experience is most likely to be gained.

Of course, this does not mean that no other person would be capable of imparting qualified knowledge of how to process European patent applications and patents. However, given the "evaluation-by-type" approach which is justified for enrolment purposes, it is not possible to examine individual places of training to ascertain whether they provide suitable preparation for the examination. In particular, the legislator was not required to recognise a period of training with representatives who are only authorised to act before their national patent office, as they typically tend to deal mostly with national patents. In practice, applicants are not required to prove that their training related specifically to European patent applications and patents, and proof of activity in connection with national patent applications and patents is deemed to be sufficient (see Article 10(4) REE and the notice entitled "European qualifying examination 1996" in OJ EPO 1995, 438, No. 2.2(a)). Accordingly, the form for the training or employment certificate in accordance with Article 10(2)(a) REE (OJ EPO 1995, 449) does not differentiate between activities pertaining to national applications and patents on the one hand, and European applications and patents on the other. This enrolment policy does not however change the fact that, under Article 10(2)(a) REE, the purpose of training is to carry out work connected with European patent applications and patents, which the legislator felt would best be guaranteed by persons who are authorised to act in proceedings before the EPO (for the scope of these activities in the present case, see patent agent B's training plan of 16 May 1995 under II.A.2).

The purpose of the law as described above cannot be called into question simply by referring to that part of the enrolment system according to which it is deemed to be sufficient if the person responsible for supervision is entered on the list of professional representatives by the date of the application for the examination by the candidate ("European qualifying examination 1996", loc. cit., No. 2.2(b)). Thus there may be cases in which the applicant's entire period of training is completed before the person responsible for supervision becomes authorised to act before the EPO. This rule is however not without justification, because achievement of the qualification under Article 134(1) EPC after training has commenced can be seen as a borderline case within the meaning of Article 10(2)(a)(i) REE which, under the enrolment system in force, is handled extremely liberally. This does not, however, mean that there is any obligation to recognise a period of training if the person responsible for the supervision did not obtain the qualification under Article 134(1) EPC at all.

3.3.3 The appellant deduces from the fact that his work at the German Patent Office was to be taken into account to make up for the missing four weeks that the Examination Secretariat generally has the discretion to decide what duties can be said to constitute training within the meaning of Article 10(2)(a) REE. The Board cannot agree with this view either. With its proposed course of action the Secretariat obviously wished, without explicitly mentioning these provisions, to keep within Article 11 REE in conjunction with Article 10 of the decision of the Examination Board of 19 May 1994 (OJ EPO 1994, 599) which, under conditions laid out in more detail therein, allow a reduction in the period of training under Article 10(2)(a) REE of up to one year.

4. The object of the contested decision and thus of the present appeal procedure is simply the question whether it was right to refuse the request for enrolment for the 1996 European qualifying examination. In support of his request to sit the examination on this date, the appellant could provide evidence only of a six-month period of training with patent agent K. Therefore the decision on the appeal does not need to concern itself with the appellant's auxiliary requests to recognise half of the period of training with patent agent B, or five months thereof. Even if the auxiliary requests were to be allowed, the required period of training of three years would still not have been completed in time for this examination. Whether or not the conditions for enrolment have since been met for a subsequent examination is not relevant to this procedure or decision.

5. As the appeal is to be dismissed, the requirements for reimbursement of the appeal fee under Article 27(4), third sentence, REE, are not met.

Order

For these reasons it is decided that:

The appeal is dismissed.