Representation before the European Patent Office

Representation before the European Patent Office

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 needs to be represented in proceedings before the European Patent Office (EPO).

General rule and exceptions

There is no general obligation 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 "must be represented by a professional representative and act through him in all proceedings", except for filing a European patent application. [ EPC Article|133|2 ] Proceedings include grant proceedings (as applicant), in opposition proceedings (as patentee, opponent or intervener pursuant to EPC Article|105), in limitation and revocation proceedings (as patentee), and in appeal proceedings (as appellant or respondent). [ EPC Article|133|1 ]

Representation of persons who must be represented and persons who do not need to be represented but who want to be represented must be by a professional representative, or in some circumstances by an authorised employee [ EPC Article|133|3] or by a legal practitioner. EPC Article|134|7 ]

Professional representatives

Professional representatives bear the title of "European patent attorney" (EPA). In order to be a European patent attorney, one must: [ EPC Article|134|2 ]
* be a national of one of the EPC Contracting States (the President of the EPO may grant exemptions "in special circumstances" ); and
* have a place of business in one of the EPC Contracting States; and
* either have:
** passed the European qualifying examination (EQE); or
** have been a qualified or experienced Patent Attorney as at the entry into force of the EPC in their state (known as the "grandfather clause" [ EPC Article|163 ] - in December 1998, the ratio of registrations under the grandfather clause to those having passed the EQE was two to one [D. Visser, The Annotated European Patent Convention 2000, 15th Edition, (Veldhoven, The Netherlands, 2007), p. 321.] ).

The European qualifying examination is a three-day pen-and-paper examination, comprising four papers:
* Paper A (3½ hours) consists in drafting of claims and introduction of a European patent application, on the basis of the fictional letter by an inventor describing an invention and prior art documents.
* Paper B (4 hours) consists in replying to a communication of an Examining Division raising substantive objections to a patent application, such novelty and inventive step objections.
* Paper C (6 hours) consists in drafting a notice of opposition against a granted European patent.
* Paper D actually consists in two legal papers:
** Paper D I (3 hours), which consists in a series of legal questions; and
** Paper D II (4 hours), which consists in a legal case usually requiring analyzing the legal situation of a client and proposing actions to be undertaken to cope with the situation.

The European qualifying examination is held each year simultaneously in various cities throughout Europe. [ EPO web site, [$File/survey_2008_en.pdf "Survey, European qualifying examination 2008"] (268 p.). ] In 2006 for instance, it was held in Berlin, Berne, Bristol, Dublin, Helsinki, Madrid, Munich, Paris, Rome, Stockholm, Taastrup, The Hague, and Vienna.

The marking of the Paper C of the EQE 2007, including awarding no point when candidates failed to select the "right" starting document [ When assessing the inventive step of claim (defining an invention in a patent or patent application), the practice at the EPO is to use the so-called "problem-solution approach", which includes a step of selecting of one piece of prior art as the closest prior art, i.e. the starting point for the inventive step assessment. ] (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. [ S. Roberts, [ "Comments on Paper C of the 2007 European Qualifying Examination"] , epi Information 4/2007, pp. 153-155. ] [ [ Decision of the Disciplinary Board of Appeal of August 28, 2008] , D*/07 ] [ fr icon Laurent Teyssedre, [ "Notation C 2007 : première décision de recours"] , Le blog du droit européen des brevets, September 17, 2008. Consulted on September 17, 2008. ]

References and notes

See also

* Centre for International Industrial Property Studies (CEIPI)
* Patent attorney
* USPTO registration examination

External links

* EPO web site
** [ Guidelines for Examination in the European Patent Office, A IX 1. Representation]
** [ Database of professional representatives]
** [ The European qualifying examination (EQE) "microsite"]

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