Representation before the European Patent Office

European Patent Convention

The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...

(EPC), the multilateral treaty

Treaty

A treaty is an express agreement under international law entered into by actors in international law, namely sovereign states and international organizations. A treaty may also be known as an agreement, protocol, covenant, convention or exchange of letters, among other terms...

providing the legal system according to which European patents are granted, contains provisions regarding whether a natural

Natural person

Variously, in jurisprudence, a natural person is a human being, as opposed to an artificial, legal or juristic person, i.e., an organization that the law treats for some purposes as if it were a person distinct from its members or owner...

or juristic person needs to be represented in proceedings before the European Patent Office

European Patent Office

The European Patent Office is one of the two organs of the European Patent Organisation , 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...

(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. Proceedings include grant proceedings

Grant procedure before the European Patent Office

The grant procedure before the European Patent Office 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...

(as applicant

Patent application

A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...

), opposition proceedings

Opposition procedure before the European Patent Office

The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...

(as patentee, opponent or intervener pursuant to ), limitation and revocation proceedings

Limitation and revocation procedures before the European Patent Office

In European patent law, the limitation and revocation procedures before the European Patent Office 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...

(as patentee), and appeal proceedings

Appeal procedure before the European Patent Office

Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...

(as appellant or respondent).

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 or by a legal practitioner.

Professional representatives

Professional representatives bear the title of European patent attorney
Patent attorney
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 an opposition...

(EPA). In order to be a European patent attorney, one must:

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" - in December 1998, the ratio of registrations under the grandfather clause to those having passed the EQE was two to one ).

European qualifying examination

The European qualifying examination (EQE) is a three-day pen-and-paper examination, comprising four papers:

Paper A (3½ hours) consists in drafting of claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...

s and introduction (field of the invention, prior art, problem to be solved and its solution) of a European patent application, on the basis of the fictional letter by an inventor describing an invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...

and prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...

documents.
Paper B (4 hours) consists in replying to a communication of an Examining Division raising substantive objections to a patent application, such novelty
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....

and inventive step
Inventive step under the European Patent Convention
Under the European Patent Convention , 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...

objections.
Paper C (6 hours) consists in drafting a notice of opposition against a granted European patent, based on a fictitious letter from a client, a European patent to be opposed, several documents and an EPO opposition form.
Paper D actually consists in two legal papers:
- Paper D I (3 hours), which consists in a series of legal questions on the EPC and the Patent Cooperation Treaty
  Patent Cooperation Treaty
  The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
  
  (PCT); 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, usually at the beginning of March, simultaneously in various cities throughout Europe. In 2006 for instance, it was held in Berlin

Berlin

Berlin is the capital city of Germany and is one of the 16 states of Germany. With a population of 3.45 million people, Berlin is Germany's largest city. It is the second most populous city proper and the seventh most populous urban area in the European Union...

, Berne

Berne

The city of Bern or Berne is the Bundesstadt of Switzerland, and, with a population of , the fourth most populous city in Switzerland. The Bern agglomeration, which includes 43 municipalities, has a population of 349,000. The metropolitan area had a population of 660,000 in 2000...

, Bristol

Bristol

Bristol is a city, unitary authority area and ceremonial county in South West England, with an estimated population of 433,100 for the unitary authority in 2009, and a surrounding Larger Urban Zone with an estimated 1,070,000 residents in 2007...

, Dublin, Helsinki

Helsinki

Helsinki is the capital and largest city in Finland. It is in the region of Uusimaa, located in southern Finland, on the shore of the Gulf of Finland, an arm of the Baltic Sea. The population of the city of Helsinki is , making it by far the most populous municipality in Finland. Helsinki is...

, Madrid

Madrid

Madrid is the capital and largest city of Spain. The population of the city is roughly 3.3 million and the entire population of the Madrid metropolitan area is calculated to be 6.271 million. It is the third largest city in the European Union, after London and Berlin, and its metropolitan...

, Munich

Munich

Munich The city's motto is "" . Before 2006, it was "Weltstadt mit Herz" . Its native name, , is derived from the Old High German Munichen, meaning "by the monks' place". The city's name derives from the monks of the Benedictine order who founded the city; hence the monk depicted on the city's coat...

, Paris

Paris

Paris is the capital and largest city in France, situated on the river Seine, in northern France, at the heart of the Île-de-France region...

, Rome

Rome

Rome is the capital of Italy and the country's largest and most populated city and comune, with over 2.7 million residents in . The city is located in the central-western portion of the Italian Peninsula, on the Tiber River within the Lazio region of Italy.Rome's history spans two and a half...

, Stockholm

Stockholm

Stockholm is the capital and the largest city of Sweden and constitutes the most populated urban area in Scandinavia. Stockholm is the most populous city in Sweden, with a population of 851,155 in the municipality , 1.37 million in the urban area , and around 2.1 million in the metropolitan area...

, Taastrup

Taastrup

Taastrup is a Danish satellite-city of Copenhagen and the administrative seat of Høje-Taastrup Municipality, Region Hovedstaden. The population in 2011 is 32,406 .-Geography:...

, The Hague

The Hague

The Hague is the capital city of the province of South Holland in the Netherlands. With a population of 500,000 inhabitants , it is the third largest city of the Netherlands, after Amsterdam and Rotterdam...

, and Vienna

Vienna

Vienna is the capital and largest city of the Republic of Austria and one of the nine states of Austria. Vienna is Austria's primary city, with a population of about 1.723 million , and is by far the largest city in Austria, as well as its cultural, economic, and political centre...

. In 2010, it is expected to be held in Berne, Bristol, Madrid, Munich, Paris, Rome, Stockholm, Taastrup and The Hague. Dictionaries and reference material can be used during the examination "as long as they are in paper form". The use of electronic devices is however not permitted.

The marking of the Paper C of the EQE 2007, including awarding no point when candidates failed to select the "right" starting document (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.

Statistics

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 ".

Change of representation

The "procedure to be followed [with respect to a change of representation] is governed by in combination with the Decision of the President of the European Patent Office dated 12 July 2007 on the filing of authorisations." "Rule 152(1) sets out that the President shall determine the cases in which an authorisation shall be filed," 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." "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."" 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. Authorisations, like priority documents, cannot be validly filed by facsimile. An original version of the authorisation has to be filed.

External links

Database of professional representatives on the European Patent Office (EPO) web site: Representation: Representation
European qualifying examination (EQE) related resources:

The source of this article is wikipedia, the free encyclopedia. The text of this article is licensed under the GFDL.