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, [http://documents.epo.org/projects/babylon/eponet.nsf/0/8F4838A2114872F7C125746D0042AF24/$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, [http://216.92.57.242/patentepi/data/epi_04_2007.pdf "Comments on Paper C of the 2007 European Qualifying Examination"] , epi Information 4/2007, pp. 153-155. ] [ [http://ipkat_readers.googlegroups.com/web/D+decision+EQE+Paper+C+2007.pdf?gda=NxB3JlEAAACAWQts1UJS0KWYxf8sLCSo65x2-fmV9wUHCqNfaW5ViCgsnmiFxfh4mxqcwmEVwh7C-xu_gwtE9N0PTurDIO_mUwk_6Qi3BU8HCN0q6OYwM5VxXgp_nHWJXhfr7YhqVgA Decision of the Disciplinary Board of Appeal of August 28, 2008] , D*/07 ] [ fr icon Laurent Teyssedre, [http://europeanpatentcaselaw.blogspot.com/2008/09/notation-c-2007-premire-dcision-de.html "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
** [http://www.european-patent-office.org/legal/gui_lines/e/a_ix_1.htm Guidelines for Examination in the European Patent Office, A IX 1. Representation]
** [http://www.european-patent-office.org/reps/search.html Database of professional representatives]
** [http://eqe.european-patent-office.org/site/index.en.php The European qualifying examination (EQE) "microsite"]