Pages 312-317

J. REPRESENTATION

J.1 General

Notice from the European Patent Office dated 28 August 2013 on matters concerning representation before the EPO

OJ EPO 2013, 535

I. Authorisation of an association pursuant to Rule 152(11) EPC

Under Rule 152(11) EPC an association of representatives can be authorised to represent a party before the EPO within the meaning of Article 134(1) EPC.

The purpose of this provision is to ensure that a party appointing several representatives can authorise them collectively as an association instead of having to authorise each of them singly, provided that the association in question is registered with the EPO. The authorisation does not relate to the association as such since only natural persons can undertake representation before the EPO. A legal fiction applies whereby each representative practising within that association is deemed to be authorised. It is important to note that the registration of an association with the EPO does not confer the status of a legal entity upon said association.

The Legal Division of the EPO has sole responsibility for the registration and deletion of associations (see decision of the President of the EPO dated 12 July 2007 concerning the responsibilities of the Legal Division, Special edition No. 3, OJ EPO 2007, G.1). The Legal Division must be informed without delay of any change relating to an association.

The present notice describes the practice of the Legal Division with regard to associations. It supersedes point 3 of the communication on matters concerning representation before the EPO of 1979 (OJ EPO 1979, 92).

1. Registration of an association

1.1 Request for registration

Requests for registration, which is free of charge, should be sent to the Legal Division of the EPO (Directorate 5.2.3). A special form is not required, although the use of EPO Form 52304 is recommended.

Requests for registration must:

(a) Indicate the name of the association under which several professional representatives intend to appear in future in proceedings before the EPO.

The name of the association is to be understood purely as a reference to the professional representatives practising within that association.

(b) Indicate the names of the persons who are entitled to act under the association's name.

An association within the meaning of Rule 152(11) EPC comprises at least two members.

(c) Confirm that all persons referred to under (b) are professional representatives.

Only professional representatives before the EPO may be members of an association within the meaning of Rule 152(11) EPC, irrespective of whether they are in private practice or employed in a company1. A professional representative can be a member of several associations.

Legal practitioners may undertake representation before the EPO under the conditions set out in Article 134(8) EPC but they may not be members of an association2.

(d) Indicate the association's address.

The Legal Division registers one address only. However, in proceedings before the EPO, an address for correspondence can be used that is not identical to the association's registered address.

(e) Bear the signature of each member of the association.

1.2 Registration

1.2.1 If the requirements for registering an association of representatives have been satisfied, the Legal Division issues a confirmation letter indicating the registration number of the association together with a list of its members.

Registration takes effect on the day on which the EPO receives the complete request or, where applicable, at a later date indicated by the requesters.

1.2.2 If the requirements for registration are not satisfied, the requesters are informed of the reasons and invited to rectify any deficiency.

2. Changes in an association

The Legal Division must be informed without delay of any change in the association. The use of EPO Form 52305 is recommended.

2.1 Change in the composition

The existing confirmation issued by the Legal Division is invalidated as soon as there is a change in the composition of an association.

A request for a change in the composition of an association must be signed by the new or departing member(s) and at least one of the remaining members of the association.

As far as the departing member is concerned, the authorisation given to the association is invalidated as from the day of his departure.

If a representative is deleted from the list of professional representatives before the EPO (see Rule 154 EPC), he is automatically deleted as a member of the association. This deletion takes effect on the day on which the representative is deleted from the list of professional representatives.

If an association is reduced to one member only, it will be deleted ex officio.

2.2. Change of name/address

The request must be signed by at least one member of the association.

3. Deletion of an association

A request for deletion of an association must be signed by all of its members. The use of EPO Form 52304 is recommended.

If an association is deleted by the Legal Division and no representative is appointed, notification will be made to the party indicated in the European Patent Register.

4. Authorisation of an association

Once an association has been duly registered with the Legal Division of the EPO, only its registered name and registration number should be cited in proceedings before the EPO, specifically in:

(a) any authorisation;

(b) in Section 15 of the request for grant of a European patent (EPO Form 1001).

The EPO notifies all communications to the association at its registered address, or at the address for correspondence indicated in the request for grant form (Section 16).

The documents submitted to the EPO can be signed by any member of the association. In addition to his own name in block capitals, the signing member of the association must indicate the name of the association and its registration number under his signature.

The name and address of the association are entered in the European Patent Register, published in the European Patent Bulletin, and printed in the published European patent application and, where applicable, in the European patent.

II. Authorisation of several representatives singly pursuant to Rule 152(10) EPC

Several representatives can be authorised by means of an authorisation in respect of one or more European patent applications, or by means of a general authorisation in respect of all European patent applications filed by the same applicant. The use of EPO Form 1003 (authorisation) or, where appropriate, EPO Form 1004 (general authorisation) is recommended.

The present notice describes the EPO's practice in cases where several professional representatives are appointed. It supersedes point 2 of the communication on matters concerning representation before the EPO of 1978 (OJ EPO 1978, 281) and point 2 of the communication on matters concerning representation before the EPO of 1979 (OJ EPO 1979, 92).

If several representatives are appointed, the practice is as follows:

(a) All authorised representatives must be named in the authorisation.

In the case of an individual authorisation, further representatives must be indicated on an additional sheet, and the box in Section 19 of the request for grant of a European patent (EPO Form 1001) must be crossed.

In the case of a general authorisation, the number of the general authorisation communicated by the EPO at the time of registration must be entered in Section 21 of the request for grant form. The Legal Division has sole responsibility for the registration and deletion of general authorisations (see decision of the President of the EPO dated 12 July 2007 concerning the responsibilities of the Legal Division, Special edition No. 3, OJ EPO 2007, G.1).

(b) In Section 15 of the request for grant form, (only) one of the authorised representatives is to be indicated, followed by the words "et al.".

Only the name of the representative indicated in Section 15 of the request for grant form, followed by the words "et al.", is entered in the European Patent Register, published in the European Patent Bulletin and printed in the published European patent application and, where applicable, the European patent.

(c) In the request for grant form, the patent attorney firm for which the representative works or the company with which he is employed can also be indicated in Section 16 in the field "Address of place of business".

(d) The EPO will notify all communications to the professional representative mentioned in the European Patent Register at the business address indicated by him in Section 16 of the request for grant form.

(e) If a representative indicated in the Register leaves the patent attorney firm or company for which he works, the EPO must be informed without delay about the impact this has on the representation for the applications concerned. Until the Office is informed otherwise, all representatives remain entitled to act in proceedings before the EPO. However, communications from the EPO will be notified to the registered, i.e. first-named, representative at his new address. Furthermore, until such time as the Office is informed otherwise, that representative needs no new authorisation because his departure from the firm or company is not regarded as a change of representative.

(f) If the representative indicated in the Register ceases to practise as such, the Legal Division must be informed without delay. The entry relating to the representative in the list of professional representatives before the EPO will then be deleted ex officio by the Legal Division. Communications from the EPO will be notified thereafter to the second representative named.