The European Patent Convention (EPC), the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person (i.e., a party to the proceedings) needs to be represented in proceedings before the European Patent Office (EPO).
There is no general obligation for a party to be represented by a professional representative to act in proceedings before the EPO. However, a person not having either their residence or place of business within the territory of one of the EPC Contracting States (a "non-European party") "must be represented by a professional representative and act through him in all proceedings", except for filing a European patent application. [1] [2] Proceedings include grant proceedings (as applicant), opposition proceedings (as patentee, opponent or intervener pursuant to Article 105 EPC), limitation and revocation proceedings (as patentee), and appeal proceedings (as appellant or respondent). [3]
Representation of persons who must be represented and persons who need not be represented but want to be represented must be by a professional representative, or, if the party is a "European party", the representation may be by an authorised employee [2] [4] or by a legal practitioner. [5] A legal practitioner representing a party before the EPO must be qualified in an EPC Contracting State, must have his place of business in that State, and must be entitled in that State to act as a professional representative in patent matters. [5] Both authorised employees and legal practitioners "must file a signed authorisation or a reference to a general authorisation already on file". [6] Subject to these rules, a party has the right to be represented in the manner he chose. [7]
Professional representatives bear the title of European patent attorney . In order to be a European patent attorney, one must: [8]
Formerly being a qualified or experienced patent attorney at the entry into force of the EPC in their state provided exemption from passing the EQEs (known as the "grandfather clause" [10] ). In December 1998, the ratio of registrations under the grandfather clause to those having passed the EQE was two to one. [11] On 29 November 2000, this clause was removed from the EPC. [12]
In order to sit the EQE, candidates should notably show that "they possess a university-level scientific or technical qualification." [13] An equivalent level of scientific or technical knowledge obtained through at least ten years' experience is also considered sufficient. [14]
Starting 2012, after 2 years of related work experience, candidates can sit the pre-examination, which is a 4-hour multiple choice exam held once a year. The pre-examination assesses candidates' ability to answer legal questions and questions relating to the drafting of claims (IPREE, Rule 10). A passing grade of 70 marks out of 100 must be achieved to be permitted to write the main exam (EQE) one year later (IPREE, Rule 6).
The main European qualifying examination (EQE) is a multi-day examination, comprising four papers, for each of which there is at least one exam. Due to the introduction of the pre-examination in 2012, starting 2013, three papers of the main exam are shorter than their previous formats so that the EQE now consists of the following papers:
The European qualifying examination is held once a year, usually at the end of February or beginning of March, [20] simultaneously in various cities throughout Europe. [21] In 2013 for instance, it was held in Berlin, Bern, Bristol, Helsinki, Madrid, Munich, Paris, Rome, Stockholm, Taastrup and The Hague. [21] Dictionaries and reference material can be used during the examination "as long as they are in paper form". [21] The use of electronic devices is however not permitted. [21]
The marking of the Paper C of the EQE 2007, including awarding no point when candidates failed to select the "right" starting document [notes 1] (for assessing the inventive step of some claims) and the blanket addition of 10 points to the grade of all C papers, was strongly criticized. [22] [23] [24]
In 2021, the EQE was held online for the first time. A proposal to change the format of the EQE exams into a modular system, held online with some exams being available more than once a year, was discussed at a conference of the European Patent Institute on 21 June, 2021. [25]
As of November 2010, there were a little more than 10,000 persons on the list of professional representatives, "just less than 1500" "legal practitioners entitled to represent before the EPO", and "about 300 patent law firms, which are registered as „associations of representatives“ within the meaning of Rule 152(11) EPC". [26] As of January 2013, there were precisely 10,427 professional representatives. [27]
Under Rule 152(11) EPC, an association of professional representatives may be formed to collectively represent a party or parties before the EPO. In such a case, the authorisation of an association of representatives is deemed to apply to any representative who practises within the association. [28] The Legal Division of the EPO is in charge of the registration of associations. [29] The registration is free of charge. [29]
The "procedure to be followed [with respect to a change of representation] is governed by Rule 152 EPC in combination with the Decision of the President of the European Patent Office dated 12 July 2007 on the filing of authorisations." [30] [31] "Rule 152(1) sets out that the President shall determine the cases in which an authorisation shall be filed," [30] whereas "Rule 152(2) sets out that where a representative fails to file such an authorisation, the EPO shall invite him to do so within a period to be specified." [30] "The Decision of the President ... states that in cases of a change of representation, and where the EPO has not been notified of the termination of the previous representative's authorisation, "the new representative must file, together with the notification of his appointment, an individual authorisation (original and one copy) or a reference to a general authorisation already on file. If he does not, he shall be requested to do so within a period to be specified by the European Patent Office."" [30] The legal consequence of not filing an authorisation when requested to do so is that the procedural steps taken by the new representative are deemed not to have been taken. [32] Authorisations, like priority documents, cannot be validly filed by facsimile. [33] An original version of the authorisation has to be filed. [31]
The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.
The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.
A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing patent applications and oppositions to granted patents.
The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.
The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.
The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.
In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.
Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.
Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.
Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is Article 56 EPC. That is, an invention, having regard to the state of the art, must not be obvious to a person skilled in the art. The Boards of Appeal of the European Patent Office (EPO) have developed an approach, called the "problem-and-solution approach", to assess whether an invention involves an inventive step.
The Guidelines for Examination in the European Patent Office are general instructions, for the examiners working at the European Patent Office (EPO) as well as for the parties interacting with the EPO, on the practice and procedure at the EPO in the various aspects of the prosecution of European patent applications and European patents. The Guidelines have been adopted, effective as at 1 June 1978, by the President of the EPO in accordance with Article 10(2)(a) EPC.
Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which also applies also in other jurisdictions.
During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.
The restitutio in integrum or re-establishment of rights under the European Patent Convention (EPC) is a means of redress available to an applicant or patent proprietor who has failed to meet a time limit in spite of exercising "all due care required by the circumstances". The legal basis for this means of redress is provided in Article 122 EPC. If the request for restitutio in integrum is accepted, the applicant or patentee is re-established in its rights, as if the time limit had been duly met.
The fees due at the European Patent Office (EPO) in relation to a European patent application are laid out in the Rules relating to Fees of 20 October 1977, as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 and as last amended by decision of the Administrative Council of 12 December 2018.
Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.
Under the European Patent Convention (EPC), any third party –i.e., essentially any person– may file observations on the patentability of an invention which is the subject of a European patent application or, after grant, subject of a European patent, especially to draw the attention of the European Patent Office (EPO) to some relevant prior art documents. This is a form of public participation in the examination of patent applications.
G 1/12 is a decision issued on 30 April 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that an appellant's identity in a notice of appeal can be corrected under Rule 101(2) EPC, provided the requirements of Rule 101(1) EPC are met. The Enlarged Board of Appeal also held that an appellant's identity can be corrected under Rule 139 EPC, first sentence, under the conditions established by the case law of the Boards of Appeal.
G 1/13 is a decision issued on 25 November 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that in opposition proceedings a retroactive effect of a restoration of a company must be recognised by the EPO. In other words, a restoration of a company has retroactive effect before the EPO when it has such retroactive effect under national law.