Quiz Qs Flashcards
In which of the following situations will the European Patent Office accord a date of filing?
Select one or more:
A. Filing with the EPO in Munich a handwritten document with a statement saying “Request for grant of a European patent”, a three-page description, two claims, and a full name and address of the applicant.
B. Filing by fax a machine typed document where the fax cover sheet indicates “European patent application” with a 20-page description and no claims [and the fax number allows the applicant to be contacted].
C. Filing by fax a machine typed document indicating the full name and address of the applicant, who is a US citizen and resident, stating that a European patent is sought, and the following statement: “reference is made to a US application that I myself filed on 1 May 2012 with the USPTO. I wish this US application to replace the description of the present application. I will gladly provide a certified copy of the US application upon request”. A set of 15 claims is also added.
D. A filled out EPO Form 1001, put in the mailbox at EPO in Munich, with a title, 5-page description in font size 6 printed horizontally on both sides of A3 paper, 156 claims, a 4-page abstract and 7 colour drawings. No fees were paid.
A, B and D
A. Filing with the EPO in Munich a handwritten document with a statement saying “Request for grant of a European patent”, a three-page description, two claims, and a full name and address of the applicant.
B. Filing by fax a machine typed document where the fax cover sheet indicates “European patent application” with a 20-page description and no claims [and the fax number allows the applicant to be contacted].
D. A filled out EPO Form 1001, put in the mailbox at EPO in Munich, with a title, 5-page description in font size 6 printed horizontally on both sides of A3 paper, 156 claims, a 4-page abstract and 7 colour drawings. No fees were paid.
A patent application is filed at the EPO late in the evening of Friday, 21 October 2011, which is not an EPO holiday, claiming priority of an earlier national patent application dated Thursday, 21 October 2010 (also not an EPO holiday). The first 25 pages comprising part of the description are received via the fax at the EPO before midnight whereas the remaining 4 pages containing the description of the developments made during the priority year and the claims are received after midnight at the EPO.
What will happen with the application? You may wish to read Special Edition 3, OJ EPO 2007, A.3 (reprinted at Special Edition 3, OJ EPO 2010, 15) before answering this question.
A. It will keep the priority of 21 October 2010 if the applicant keeps all pages.
B. The filing date will be 22 October 2011 if the applicant drops the last four pages.
C. It will lose the priority of 21 October 2010 if the applicant keeps all pages.
D. The filing date will stay 21 October 2011 if the applicant keeps all pages.
C. It will lose the priority of 21 October 2010 if the applicant keeps all pages.
Which of the following situations will lead to a filing date of 3 November 2011?
Some other documents were filed on 3 November 2011 but:
A. The description, claims and drawings were filed in English on 2 December 2011 together with the Request for Grant form on which there is no indication of the applicant or the inventor, only the full name of the professional representative is provided.
B. The description, claims and drawings were filed by a Latvian applicant, using the Request for Grant form to indicate the applicant’s name and address, in Latvian on 3 November 2011, a translation of all the documents into German was filed on 12 December 2011.
C. The application was filed in English, using the Request for Grant form to indicate the applicant’s name and address and consists of a description of the invention and drawings but no claims on 3 November 2011. A set of claims for the application was filed on 4 January 2012.
B. The description, claims and drawings were filed by a Latvian applicant, using the Request for Grant form to indicate the applicant’s name and address, in Latvian on 3 November 2011, a translation of all the documents into German was filed on 12 December 2011.
C. The application was filed in English, using the Request for Grant form to indicate the applicant’s name and address and consists of a description of the invention and drawings but no claims on 3 November 2011. A set of claims for the application was filed on 4 January 2012.
Which of the following do not belong to the formal deficiencies that can be objected to after accordance of a filing date?
A. A missing designation of the inventor.
B. A missing request for grant form.
C. A missing abstract.
D. A missing set of drawings.
D. A missing set of drawings.
A European patent application was accorded a date of filing. The patent application comprises 45 pages, which includes a 1-page abstract and 20 claims.
Which fees must be paid if the applicant does not want to receive any invitations to correct deficiencies or communications from the EPO?
A. Page fees for ten pages, search fee, filing fee and five claim fees within one month from filing.
B. The search fee, filing fee within one month and the page fees for ten pages, five claim fees within two months from filing.
C. The search fee, filing fee within one month from filing and five claim fees within two months from filing.
D. Page fees for nine pages, claims fee for five claims, the search fee and the filing fee within one month from filing.
A. Page fees for ten pages, search fee, filing fee and five claim fees within one month from filing.
European patent application EP1 was filed with 15 claims. Two claims were added during examination. The applicant has received a communication under Rule 71(3) EPC, and the “Druckexemplar” includes claims 1-17.
Which of the following statements is correct?
A. Failure to pay the additional claims fees results in claims 16-17 being deemed abandoned.
B. Failure to pay the additional claims fees results in the application being deemed withdrawn.
The correct answer is: B Failure to pay the additional claims fees results in the application being deemed withdrawn.
The application is deemed withdrawn pursuant Rule 71(7) EPC. The loss of rights will be notified according to Rule 112(1) EPC, and can be remedied by requesting further processing under Article 121 EPC.
The examining division has decided to grant a European patent based on European patent application EP1. The decision is based on claims 1-10. The mention of the grant in respect of EP1 has just been published. On the same day, the specification of the resulting European patent was published (B1-document). A few days later you discover an error in the wording of claim 1 in the published patent specification: The last two lines of claim 1 of the B1 are missing compared to claim 1 on which the decision to grant was based.
Which of the following statements is correct?
A. As the European Patent Office is no longer responsible for the European patent after grant, correction of the error can only be performed with the national offices of the contracting states in which the patent has been validated.
B. The correction of the error is possible by filing an appeal against a decision to grant. The patentee is adversely affected by the error and may thus appeal.
C. Correction of the error is not allowed if the correction would extend the scope of protection compared to the scope of the claims published in the B1 document.
D. The mistake has no effect on the content of the patent granted.
E. Correction of the error restarts the opposition period.
The correct answer is: The mistake has no effect on the content of the patent granted.
The mistake has no effect on the patent as granted, since the text of the published patent has no legal consequence or binding character, both the latter being determined by the publication of the mention of the grant in the European Patent Bulletin and the “Druckexemplar” as the authentic text (Article 98 EPC) (see also GL C-V 10). Only the text on which the decision to grant the patent is based, the “Druckexemplar”, is decisive (see GL H‑VI, 4). Thus, mistakes in the specification of a European patent arising in the course of its production have no effect on the content of the patent granted.
N.B. We now have decision G 1/10. Previously, it was attempted to apply Rule 140 EPC analogously for corrections of patent publications although this rule relates to errors in decisions. This is no longer possible. Rule 140 EPC is not available to correct patents (compare T 0802/10).
Corrections of patent documents are admissible only under Rule 139 EPC until the patent is granted and as long as proceedings are pending (see GL H‑VI, 2.2.1; GL H-VI, 3.1). After this point in time, only errors in bibliographic data or printing errors may be corrected (see GL H‑VI, 6 and 3.2 and 3.3).
If necessary, the EPO may arrange for the correction to be made public as soon as any mistake in a specification is discovered. This is done by means of a note in the European Patent Bulletin and publication of a corrigendum, the sole purpose being to bring the specification into line with the content of the decision to grant (see Rule 143(2) EPC and the Decision of the President of the EPO dated 14 October 2009, OJ EPO 2009, 598, Art. 1, point 2).
Errors of this kind can be corrected at any time (see also GL C‑V, 10). A complete republication of the patent specification will take place where appropriate (see GL H‑VI, 6).
This has no influence on the opposition period which is triggered by the publication of the mention of the grant, not by the publication of the B1 document (Article 99(1) EPC; T 1644/10).
European patent application EP1 was filed 17 months ago without claiming priority. EP1 is validly pending. Last Wednesday you received a communication from the EPO informing you that the technical preparations for publication of EP1 have been completed and that the application will be published a few weeks from now.
True or false: There still a chance that publication of EP1 may be prevented. You may wish to read decision J 5/81 before answering this question.
The correct answer is ‘True’.
If after termination of the technical preparations the application is withdrawn to avoid publication, non-publication cannot be guaranteed (Rule 67(2) EPC). The EPO will try (in accordance with the principles of J 5/81, OJ EPO 4/1982, 155) to prevent publication on a case-by-case basis if the stage reached in the publication procedure permits this reasonably easily (GL A-VI, 1.2). The President of the European Patent Office has determined when the technical preparations for publication are deemed to have been completed (Rule 67(1) EPC; which is at the end of the day that comes five weeks before expiry of the 18 month from the filing date or earliest claimed priority date (Dec. of Pres. Spec. Ed.3 of OJ EPO 2007, D1). Even after the five weeks period has expired, there is still the possibility, but no guarantee, that publication can be prevented.
The examination fee in respect of European patent application EP1 has been paid upon filing. On the request for grant form, the box indicating that the applicant has waived his right to receive a communication according to Rule 70(2) EPC has been crossed. The applicant has received a communication under Rule 71(3) EPC together with the European search report.
True or False: The applicant has the right to amend the claims of his own volition at this stage.
The correct answer is ‘True’.
Article 123(1), last sentence, EPC gives the applicant the right to amend the application at least once of his own volition (GL C-III, 2).
Before receiving the European search report, the applicant may not amend the application (Rule 137(1) EPC).
When receiving the Search Opinion accompanying the European search report, the applicant is given the opportunity to file comments, corrections or amendments (Rule 70a(1) EPC). This is the ONLY opportunity to file amendments of his OWN volition (Rule 137(2) EPC). No further amendments may be made without consent of the examining division (Rule 137(3) EPC), although generally such consent will be given if this brings the application closer to grant.
When the request for examination is filed early, i.e. the examination fee was paid before receiving the search report, the applicant will receive a communication under Rule 70(2) EPC. The search division then normally invites the applicant to confirm whether he wishes to proceed further with the application and file voluntary comments/amendments on the attached opinion under Rule 70a EPC. However, if the applicant has waived the Rule 70(2) EPC communication, no search opinion is prepared. Instead the application goes straight to examination and the first substantive examination is the Art. 94(3) EPC communication or Rule 71(3) EPC).
Because, in the case of the question, the applicant has waived his right to receive the Rule 70(2) EPC communication, the European search report accompanying the Rule 71(3) EPC communication allows him to file amendments of his own volition even at this late stage of the proceedings and despite the application being ready for grant (See GL C-VI, 3 and C-III, 2).
This is regulated by Rule 70a(2) EPC. Accordingly, the EPO is obliged to give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period specified for indicating whether he wishes to proceed further with the application.
A waiver of the Rule 70(2) EPC communication is thus a waiver to be asked about continuation of proceedings, and should not be misinterpreted as a waiver of the right to file voluntary amendments under Article 123(1), last sentence, EPC.
After responding to the communication pursuant Rule 161(1) EPC in respect of a Euro-PCT application where the EPO acted as IPEA, the applicant withdraws the application. The examination fee was duly paid upon entry into the European phase.
Which of the following statements is correct?
A. 75% of the examination fee will be refunded if substantive examination has not yet started.
B. The examination fee will be fully refunded if substantive examination has not yet started.
C. No refund is possible.
The correct answer is: B, The examination fee will be fully refunded if substantive examination has not yet started.
The examining division has resumed responsibility as from the request for examination (Rule 10(2) EPC), however, under the new revised rules (OJ EPO 2016, A48), the decisive condition is whether the examination itself has started or not.
If substantive examination has not yet started, the applicant is entitled to a 100% refund (Article 11(b) RFees; and Decision of the Administrative Council of 29 June 2016 amending Article 11 of the Rules relating to Fees, OJ EPO 2016, A48).
The date of start of examination (GL C‑IV, 7.1 – old GL version still online 01 June 2020) is indicated by means of the European Patent Register after publication of the patent application. Recently, the EPO has decided to stop issuing EPO Form 2919 as of 1 February 2020. The Office will continue to publish the date of the start of examination in the public part of the file, so it will still be available for file inspection in the European Patent Register after publication of the patent application. Before publication, the Office will provide applicants with the relevant information at their request, or else they can access this information online via the My Files service.
If substantive examination has started and also before expiry of the time-limit for responding to the first Art. 94(3) EPC communication or issuing of a Rule 71(3) EPC communication, an amount of 50% can be refunded (GL A-VI, 2.5).
True or False: The time limit for responding to a communication under Rule 71(3) EPC is extendable.
False. This is not an office time limit, but a time limit of four months from notification of the communication, which is specified in the Implementing Regulations (Rule 71(3) EPC). Hence, it is not extendable. Failure to meet the time limit will lead to the application being deemed withdrawn under Rule 71(7) EPC. This can be remedied by requesting further processing under Article 121 EPC and paying the fee for grant and publishing and providing a translation of the claims plus the further processing fee; or requesting grant on the basis of a different text.
One month after receipt of a communication under Rule 71(3) EPC, the applicant requests oral proceedings. No oral proceedings have yet been held in respect of the European patent application, but the examining division does not believe that a discussion during oral proceedings would be expedient.
True or False: The examining division can refuse this request.
False. No, the applicant has the right to oral proceedings (Article 116(1) EPC; GL E-III, 2). The request must be made prior to the termination of proceedings which occurs three days prior to the date stamped on the Decision to Grant (T 556/95 r.6 and G 12/91 r.9).
Side note: In T 2573/11, the three-day rule of G 12/91 was not maintained and the document was marked “to EPO postal service” at the bottom of the letter with a different date that was earlier than three days before the date stamp on the communication. In this case, the Board argued that the actual day of hand-over to the postal service is decisive.
During substantive examination the applicant of European patent application EP1 has received a second communication pursuant to Article 94(3) EPC.
In this and the earlier communication under Article 94(3) EPC (as well as in the European search opinion), only clarity and sufficiency of disclosure have been discussed. Oral proceedings have not been requested.
The applicant responds to the communication presenting arguments in support of clarity and sufficiency of disclosure. The first examiner finds the applicant’s arguments convincing, but he regards document D1 from the European search report as clearly novelty destroying.
True or False: The examining division can refuse the application on the basis of lack of novelty without issuing a further communication under Article 94(3) EPC.
False. No, the examining division may only base a decision on grounds on which the applicant has had an opportunity to comment (Article 113(1) EPC). The examining division may issue an immediate refusal after a first communication, but this must be based on grounds on which the applicant has had an opportunity to comment (GL C-IV, 3).
If examination of the applicant’s reply shows that despite his submissions objections persist, and provided that at least one communication has been sent in examination proceedings (see GL C-III, 4 and E-IX, 4.1) and the applicant has been given the right to be heard (Art. 113(1) EPC), i.e. the decision is based solely on grounds on which he has had an opportunity to comment, the examiner will consider recommending to the other members of the examining division that the application be refused (see T 201/98). However, where there is a reasonable prospect that an additional invitation to overcome the objection(s) could lead to the grant of the application, the examiner will send a further written communication or contact the applicant by telephone. The examiner may also make suggestions on how to overcome the raised objections (see GL B-XI, 3.8, and C-III, 4.1.2).
European patent application EP1 is validly pending at the European Patent Office. A communication under Article 94(3) EPC was issued on 15 April 2016 in which applicant is requested to bring the description in conformity with the amended claims that have been accepted for grant. The time limit for filing a response is set at two months. The applicant is preparing replacement sheets of the description by introducing handwritten amendments.
Do the replacement sheets fulfil the requirements of the EPC?
No. Rule 49(8) EPC stipulates that the request for grant of a European patent, the description, the claims and the abstract shall be typed or printed, and that only graphic symbols and characters and chemical or mathematical formulae may, if necessary, be drawn or written by hand (GL A-IX, 11.1). Therefore, also any replacement documents must be typed or printed too (R. 50(1) EPC). Thus, replacement sheets with handwritten amendments do not fulfil this requirement.
Handwritten amendments by the applicant to the description, claims and abstract (unless they involve graphic symbols and characters and chemical or mathematical formulae) are no longer accepted in strict compliance with Rule 50(1) EPC in conjunction with Rule 49(8) EPC (see OJ EPO 2013, 603, and GL A-III, 3.2). For the procedure to follow in oral proceedings, see GL E-III, 8.7.3 (also GL C-V, 3).
European patent application EP2 is validly pending at the European Patent Office. The examining division is not prepared to grant a patent and therefore the applicant has been summoned to attend oral proceedings. During oral proceedings which take place on 15 April 2016, the applicant submits a new set of amended claims that can be accepted by the examining division. In the new set of amended claims the applicant has indicated the changes by introducing handwritten amendments.
Do the documents with handwritten amendments fulfil the requirements of the EPC?
No. Rule 49(8) EPC stipulates that the request for grant of a European patent, the description, the claims and the abstract shall be typed or printed, and that only graphic symbols and characters and chemical or mathematical formulae may, if necessary, be drawn or written by hand. Replacement sheets with handwritten amendments do not fulfil this requirement.
In examination, the formal requirement of Rule 49(8) EPC applies to documents submitted during oral proceedings as well. Documents containing handwritten amendments will normally be accepted by the division as a basis for discussion during oral proceedings until agreement is reached on the final text of the patent. However, a final decision granting a patent may be taken only on the basis of documents which are formally compliant (GL E-III, 8.7.1)
In the decision of 14 October 2015, Rule 82(2) EPC was amended so that documents with handwritten amendments could be submitted in oral proceedings in opposition and opposition appeal proceedings (Decision of the Administrative Council of 14 October 2015 amending Rule 82 EPC, OJ 2015, A82, and Notice from the European Patent Office dated 9 March 2016 concerning amended Rule 82 EPC, OJ 2016, A22). Amended Rule 82(2) EPC does not apply to documents submitted during oral proceedings before an examining division.
Whereas the formal requirement of Rule 49 EPC apply to documents submitted during oral proceedings during examination, in practice such amendments may be accepted by the examining division, in which case the applicant will be invited to file the submissions in typed or printed form within two months. For further details, see GL E-III, 8.7.
An applicant receives a communication under Rule 71(3) EPC dated 9 June 2016. When reviewing the text intended for grant, the applicant discovers a typing error in claim 1. The applicant wishes to file a request for correction in order to have the typing error corrected, but he also wishes to obtain a patent as soon as possible. The applicant knows that if he files a request for correction in response to the Rule 71(3) EPC communication, then the EPO shall issue a new communication under Rule 71(3) EPC before the decision to grant can be issued.
Is it possible for the applicant to avoid that the EPO issues the further communication under Rule 71(3) EPC?
Yes. Since 1 July 2015, the EPO has offered applicants the option of expressly waiving their right to receive a further communication under Rule 71(3) EPC (notice of allowance) aiming to increasing procedural efficiency (see OJ EPO 2015, A52).
However, as of May 2020 and following consultation with users and the fact that applicants very rarely make use of the waiver procedure, the EPO has decided to abolish the waiver option and so always to establish approval of the text intended for grant in accordance with the procedure laid down in Rule 71(6) EPC.
Consequently, the EPO will no longer process waivers which are filed in response to a communication issued on 1 July 2020 or later informing the applicant of the text intended for grant, i.e. the option to waive the right to a further communication under Rule 71(3) EPC is no longer be available. Waivers which are filed in response to such a communication dated before 1 July 2020 will, however, still be processed (see notice from the EPO dated 26.05.2020: OJ EPO 2020, A73).
A PCT application was filed on 10 January 2014 without claiming priority from an earlier application. The PCT application entered the European regional phase on 7 July 2016. Applicant wishes to validate the Euro-PCT application in Moldova.
Is it possible for the applicant to validate the Euro-PCT application in Moldova?
No. The agreement on the validation of European patent in Moldova entered into force on 1 November 2015 and applies to any European or international patent applications filed on or after that date. The Euro-PCT application was filed on 10 January 2014, which is before 1 November 2015, and therefore it is not possible to validate the Euro-PCT application in Moldova (Decision of the President of the European Patent Office dated 1 October 2015 fixing the amount of the fee for validating European patent applications and patents in the Republic of Moldova, OJ EPO 2015, A84, and Validation of European patents in the Republic of Moldova (MD) with effect of 1 November 2015, OJ 2015, A85).
An applicant files a European patent application with the EPO on 6 June 2016. The application claims priority from an earlier Spanish patent application which was filed at the Spanish patent office.
Must the applicant file a copy of the search result which the Spanish patent office carried out on the earlier Spanish patent application?
No. As of 1 June 2016, the EPO includes a copy of the search results from the Spanish patent office, thus exempting the applicant from filing said copy (Decision of the President of the European Patent Office dated 10 February 2016 exempting applicants claiming the priority of a first filing made in Spain from filing a copy of the search results under Rule 141(1) EPC, OJ 2016, A18).
On the last day of the opposition period a US patent attorney faxes an opposition to the EPO in Munich. The opposition names a US company as opponent. No professional representative has been appointed.
True or False: This deficiency can still be corrected.
True. The notice of opposition must be signed by the person responsible, i.e.by the opponent or, where appropriate, by his representative (GL D-III, 3.4).
The US patent attorney is not entitled to represent the US company before the EPO. The actions of the US patent attorney are to be judged as if the signature were missing. Thus, the deficiency can be remedied under Rule 50(3) EPC. See GL D-III, 3.4: If the signature is omitted, the formalities officer must request the party, or where appropriate his representative, to affix his signature within a time limit to be laid down by the formalities officer. If signed in due time, the document retains its original date of receipt; otherwise it is deemed not to have been received.
(see also: T 665/89)
A German company A and a Dutch company B file a European patent application EP1 as joint applicants. Company A is the first-named applicant. Companies A and B are different legal entities.
True or False: An employee of company A can represent companies A and B before the EPO in matters regarding EP1, even though the employee is not a professional representative.
True. Both applicants have a place of business in a contracting state, i.e. no professional representative is needed (see also Article 133(1), (2) EPC), and representation by an employee is possible (see also Article 133(3) EPC). The employee needs to be authorised (see also Rule 152(1) EPC, Special Edition 3 of OJ EPO 2007, L.1) and company A needs to be appointed common representative (either expressly or as first named applicant (Rule 151(1) EPC).
In general, although representation is only mandatory for non-EPC contracting state persons, there is no legal provision for an employee to act on the behalf of an external company. Thus, you might expect that the employee of company A cannot represent another company B.
However, we have the exceptional case of joint applicants. In addition, we have the situation that both companies do not need a professional representative, because they have their place of business in a contracting state (Rule 133(1)(2) EPC). N.B. Employees can only represent persons resident in a Contracting State [Article 133(3) EPC; T298/97, headnote II]
If A and B do not name a common representative for their joint application, then Company A as first named applicant can be appointed the common representative (Rule 151(1) EPC). Company A is now responsible for the acts towards and communication with the EPO.
But as common representative for A and B, A can authorise one of its employees to represent company A and therefore through derivation also indirectly B before the EPO (Rule 133 (3) EPC). For that the employee needs to be authorised by the common representative, here A (Rule 152(1), Rule 133(3) EPC). The authorisation of company B is not necessary, because company A, as common representative, can act on this matter alone. In this case, the employee of Company A is not only representing company A, but also indirectly company B before the EPO.
Therefore, in the end, the employee is the person acting on behalf company A, and since A is the common representative, he is also acting for company B. Technically, the employee may be acting for the joint application association of A and B together.
Rule 151(1) EPC only refers to appointing a professional representative or the first named applicant as common representative. It does not refer to any authorisation, because only when the first named applicant wishes to name an employee as his representative, does the employee need to be authorised by the first named applicant, who is the common representative.
A Swedish company A has filed a PCT application with the Swedish Patent Office. During the International phase, the Swedish company was represented by a Swedish national patent attorney X who is not a professional representative.
True or False: After entry into the regional phase before the EPO as designated office, the EPO would grant a request by company A that all future correspondence from the EPO should be sent to Swedish patent attorney X.
False. The Swedish company is not required to appoint a representative. However, if it wishes to be represented, it needs to be represented either by a professional representative (Article 134(1) EPC), by a legal practitioner (Article 134(8) EPC) or by an employee (Article 133(3) EPC). A national patent attorney cannot be appointed as a representative before the EPO.
A German company A and a Dutch company B file a European patent application EP1 as joint applicants. They are jointly represented by a professional representative. Company A is the first-named applicant. The professional representative subsequently ceases to represent his clients.
The EPO will automatically communicate with company A as common representative.
False.Companies A and B are first requested by the EPO to appoint a common representative, i.e. following the same procedure as in Rule 151(2), second sentence, EPC. Only if they do not comply with this invitation, is the EPO empowered to appoint a common representative (J 10/96).
Detailed explanation why Rule 151(1) EPC is not applied:
In order to apply Rule 151(1), first sentence, EPC, there are two conditions that should be met. First, there has to be more than one applicant AND second, in the request for grant of a European patent nobody should be named as common representative, so that the first applicant can be the common representative. The first condition is satisfied because we have company A and company B. The second condition in the first sentence is not applicable, because both A and B named a common representative and were represented by him immediately on filing of the application (see J 10/96 Point 3). The common representative ceased to represent his clients only after filing of the application. So this regulation is only for the case where there is no common representative at the stage of filing the request for grant of a European patent. Consequently Rule 151(1) EPC cannot be considered.
The second sentence of Rule 151 (1) EPC is applicable if one of the applicants is obliged to name a common representative (e.g. if it has its place of business in a non-contracting state) unless the first-named applicant has appointed a representative. This is not the case here because A and B both have their principal place of business in the European Union/contracting state (see Article 133 EPC; GL A-VIII 1.1) and have jointly appointed a common representative. Therefore, Rule 151(1), second sentence, EPC is not applicable either.
As for Rule 151(2), first sentence, EPC, there has to have been a transfer of the application AND the applicants have not to have named a common representative. In this case, there has not been a transfer of the application, so the conditions of Rule 151(2), first sentence, EPC are not fulfilled, and Rule 151(1) EPC cannot be applied. In conclusion, neither Rule 151(1), first and second sentences, nor Rule 151(2), first sentence, EPC are an option (see J 10/96 Point 3).
However, Rule 151(2) EPC is sometimes applied by the EPO in a broader context. If none of the above-mentioned options can be considered, the European Patent Office will follow the procedure of Rule 151(2) EPC by analogy and ask the applicants, here company A and company B, to appoint a common representative within a given period of time. If the applicants do not meet this demand, the EPO will appoint a representative.
The question was whether the EPO will automatically communicate with company A as the common representative as A was the first-named applicant. As shown above, Rule 151(1) and Rule 151(2), first sentence, EPC are not applicable and so Rule 151(2), second sentence, EPC is used. Consequently, the EPO will first request companies A and B to appoint a common representative within a given period of time before appointing a representative. Therefore, the EPO does not communicate automatically with company A as common representative.
Company A files a notice of opposition signed by employee X of company A. The EPO invites the opponent to file an authorisation for employee X. In response to this invitation, employee X identifies himself as a professional representative, who appears on the list of professional representatives.
True or False: This is a sufficient response.
True. Only employees, who are not professional representatives, need to file an authorisation. There is no time limit for when the professional representative must identify himself as such. Professional representatives, who identify themselves as such will be required to file a signed authorisation only in certain exceptional cases (see the Decision of the President of the EPO dated 12 July 2007, Special edition No. 3, OJ EPO 2007, L.1, GL A-VIII, 1.5), such as when representation changes and the former representative has not withdrawn representation.
Professional representative X has filed a notice of opposition on behalf of company A. No authorisation was filed for X. A summons to oral proceedings is subsequently issued. Professional representative X sends a letter to the EPO stating that company A will be represented during the oral proceedings by professional representative Y, who is not a member of the same association as professional representative X. Professional representative X has not expressly stated that his authorisation has terminated.
True or False: Professional representative Y should file an authorisation.
True. According to the Decision of the President (Decision of the President, Special Edition 3, OJ EPO 2007, L.1) representative Y has to file an authorisation, because the EPO has not been notified that the previous representative’s authorisation has terminated and there is no evidence that X has been authorised to give sub-authorisations.
