J 0011/94 (Pleading by person other than an authorised represenative) 17-11-1994

Reasons for the Decision

1. The decision whether the former EPO judge may plead before the board in the present proceedings depends on the question of law whether a person not personally entitled to act as a representative before the EPO may be given the opportunity to make submissions during oral proceedings in addition to the professional representative's pleadings.

1.1 This question has been answered differently by two boards:

1.1.1 Technical Board of Appeal 3.4.1 answered the question in the negative in its decision T 80/84 (loc. cit.). It based its answer on the fact that representation in oral proceedings could only be undertaken by persons so entitled under Articles 133 and 134 EPC, ie professional representatives in accordance with Article 134(1) EPC, under particular circumstances legal practitioners in accordance with Article 134(7) EPC and employees of parties in accordance with Article 133(3) EPC.

1.1.2 On the other hand, in T 598/91, Technical Board of Appeal 3.2.2 allowed a person accompanying a party or his representative to plead under the supervision and on the responsibility of the latter. It examined decision T 80/84 critically and expressed the view that a distinction had to be drawn between the concepts of "pleading" and "representation": "representation" meant acting in lieu of someone for the purpose of exercising a right while "pleading" merely meant developing arguments orally. Board 3.2.2 took the view that the supplementary pleading of an assistant or expert could be beneficial in resolving technical or legal aspects of a case. On the basis of this differentiation between pleading and representation, the board expressly departed from T 80/84 by concluding that it was within the discretion of the board to give or withdraw its permission for an accompanying person to plead.

1.1.3 Reference is further made to decision T 843/91 of Technical Board of Appeal 3.3.1 (OJ EPO 1994, 818), in which it was permitted for an accompanying person to give further explanations of technical matter on the basis of Article 117(1) EPC (loc. cit., point 9.3 ff of the reasons for the decision). This decision does not relate to pleading on questions of law, which is what is under discussion in the present proceedings.

1.2 In view of these discrepancies the board considers that a decision by the Enlarged Board of Appeal is required in order to ensure uniform application of the law. The parties ought to be able to know in advance who is allowed to speak during oral proceedings so that they have the opportunity to prepare properly for the proceedings and make a suitable contribution to the application of the law.

1.3 In the event that the question referred under point 1 is answered in the affirmative, the board considers it likely that basic rules for exercising such discretion will be laid down on the basis of certain criteria. Although the relevant circumstances of each individual case always have to be taken into account when exercising discretion, circumstances that recur in typical groups of cases ought to be dealt with uniformly. Such circumstances could for example relate to the questions to be settled. In this respect it ought to be decided whether pleadings by an accompanying person can serve equally to clarify technical and legal matters. With regard to the group of people to be authorised, an important question might be whether a certain minimum qualification is to be required. Finally, a distinction can be made according to the purpose of the pleading by an accompanying person, whether it must always serve to further the proceedings or may also serve training purposes prior to the acquisition of the entitlement to act as a representative in the field of industrial property rights. In the interests of legal certainty, the board considers it a question of fundamental importance whether, for certain groups of cases, there are uniform assessment criteria for the discretionary decision to be taken (Question 2(a)).

1.4 The board has singled out such a group in sub-question 2(b).

1.4.1 The board does not consider it impossible that, when former board members appear in oral proceedings, the public might gain the impression that former members' personal connections with current members, arising from their previous work together, could colour the decision to be taken. Such an impression could destroy the public's trust in the independence and objectivity of case law and damage the boards' reputation, even where, in the particular case in question, there was no objective evidence to support such an impression.

1.4.2 Such considerations cannot simply be dismissed from the outset, particularly since national legal systems within the field of application of the EPC have deliberately taken precautions to avoid the impression of undue influence being exerted on case law in comparable situations.

1.4.2.1 In France, Article 9-1 of decree No. 58-1270 of 22 December 1958 in the version of the organic law No. 94.101 of 5 February 1994 stipulates that former judges are forbidden for five years from working as or for lawyers in their former judicial district.

1.4.2.2 Likewise, in Germany, Article 20(1) No. 1 of the Bundesrechtsanwaltsordnung [Federal order on lawyers] stipulates that an applicant is not to be admitted as a lawyer in a regional judicial district in which he has been active as a judge or established civil servant within the last five years.

1.4.2.3 In England and Wales, former judges wishing to return to the legal profession are in principle not readmitted to the Bar (Halsbury's Laws of England, 4th ed. reissue, London 1989, Vol. 3(1) Barristers, paragraph 441).

1.4.3 The exercising of discretion in deciding whether or not to allow the pleadings of an accompanying person may restrict professional opportunities for former board members. A starting point can be found in the law deriving from the EPC. The Service Regulations adopted by the Administrative Council in accordance with Article 33(2)(b) EPC regulate the legal status of EPO employees. Article 19 ServRegs obliges former employees to behave with integrity and discretion as regards the acceptance of certain appointments or benefits. The question is whether this very general obligation can, in concrete terms, amount to a prohibition on certain activities. One consideration here could be that former board members in particular are in some way required to avoid activities which could give the public cause to doubt the objectivity of case law and equality of prospects in appeal proceedings.

1.5 The relevance of the point of law referred does not in this case depend on whether or not the appeal is admissible, since the former EPO judge should be given leave to speak, in particular also on the question of admissibility. A decision on whether or not he is authorised to participate must therefore precede any decision on the admissibility of the appeal.

2. The point of law remains relevant even after a decision on it has been announced.

2.1 The appellant did submit a letter containing the words "withdrawal of appeal". However, the context of the preceding events and the format of the letter create the impression that the words "withdrawal of appeal" are not a declaration in themselves but are intended only as a reference to indicate the subject-matter of the letter, with the result that the actual declaration regarding procedure could be expected to follow. This is confirmed by looking at the four preceding letters from the appellants' representative in the present proceedings. All share the same format, which consists of a reference and a horizontal line, followed in the middle of the page by a declaration regarding procedure. It is this declaration that is missing in the letter dated 22 September 1994. The withdrawal of the appeal is by no means the only possible explanation for the reference chosen. It is also conceivable for example that the appellants' representative intended to announce that - although he still had to discuss it with the appellant - he was considering withdrawing the appeal in order thus to spare the board the work of drafting the written reasons for the decision.

2.2 For reasons of legal certainty any declarations regarding procedure must be unambiguous, particularly - because of their consequences - declarations terminating the proceedings. As explained in 2.1, the meaning of the submission dated 22 September 1994 could not be clearly established. The submission therefore does not constitute the effective withdrawal of the appeal. Even before the board could have informed the appellants accordingly, their representative had announced by a communication dated 12 October 1994 that the submission dated 22 September 1994 was not intended to declare the withdrawal of the appeal.