J 0019/89 (Legal practitioner) of 2.8.1990

Summary of Facts and Submissions

I. The appellant requested the European Patent Office (EPO) on 29 March 1988 to declare that he was entitled under Article 134(7) EPC to act as professional representative for other persons before the EPO. That request was rejected by decision dated 27 April 1989 of the Legal Division of the EPO referred to in Article 20 EPC. In an appeal dated 19 June 1989 the appellant requested that that decision be set aside and his original request granted.

II. That request is based essentially on two lines of argument: Article 134(7) EPC explicitly allowed any "Rechtsanwalt", "legal practitioner" or "avocat" qualified in a Contracting State to act as a professional representative before the EPO. The term "legal practitioner" was equivalent to "Rechtspraktiker" and in that sense the appellant was a legal practitioner qualified in the Federal Republic of Germany. Indeed, he was a qualified German patent attorney (Patentanwalt). He also held doctorates in engineering and law and had passed the "erste juristische Staatsexamen".( roughly equivalent to a law degree in Great Britain) If he could not be authorised to act as a professional representative on the basis of a literal interpretation of Article 134(7) EPC, he should be granted that authorisation as a qualified German Patentanwalt by way of analogy with a qualified German Rechtsanwalt [the closest equivalent qualification to the English solicitor or barrister]. Otherwise the principle of equality would be infringed, especially since most "Rechtsanwälte" had no training whatsoever in patent matters.

Reasons for the Decision

1. The appeal is admissible under Article 106(1), first sentence, EPC, since it is brought against a decision of the Legal Division of the EPO. The Legal Division was responsible for the ruling in question by virtue of Article 20(1) EPC and the Decision of the President of the EPO dated 10 March 1989 under Rule 9(2) EPC (OJ EPO 1989, 177).

2. The appellant can qualify to act as a professional representative before the EPO only by being entered on the "list of professional representatives" in accordance with Article 134(2) EPC, that is to say in the final analysis by passing the European qualifying examination.

3. It is clear from a closer examination of Article 134 EPC in conjunction with the transitional solution set out in Article 163 EPC that professional legal advisers other than legal practitioners may act as professional representatives only by virtue of the transitional solution and - once that avenue is closed - only by being entered on the list in accordance with Article 134(2) EPC. As far as professional legal advisers in patent matters are concerned, there have been and still remain large differences in the Contracting States with regard to qualifications and admission to the profession. This is true above all with regard to the difference referred to in Article 163(3) EPC between persons with "special professional qualifications" and those without such qualifications in the particular jurisdiction. During the transitional period the way for all advisory professions in patent matters to appear on the list of professional representatives by virtue of Article 134(2) EPC was certainly via Article 163 EPC. After the end of the transitional phase this avenue is closed to professional legal advisers - irrespective of their qualifications - other than legal practitioners.

4. The arrangements for legal practitioners set out in Article 134(7) EPC - from which the appellant seeks to benefit - constitute an exception. Despite all the differences in the designations and career backgrounds of the persons included in the ranks of legal practitioners, the profession has developed on an essentially equal footing in the Contracting States as a result of Europe's common legal history and shared legal culture. That profession acts - to use the words of the German rules governing the profession of Rechtsanwalt (deutsche Rechtsanwaltsordnung - BRAO) - purely and simply as an "organ of the judicial machinery" (§ 1) and always as a "representative in all legal matters" (§ 3). The appellant does not claim to be a Rechtsanwalt.

5. Article 134(7) EPC is confined, for the territory of the Federal Republic of Germany, to the profession which is statutorily defined as that of the "Rechtsanwalt". This is not altered by the fact that, in addition to being a "Rechtsanwalt" or "legal practitioner" or "avocat", the representative must also be "entitled, within the [State concerned], to act as a professional representative in patent matters". In relation to a German Rechtsanwalt that requirement is not redundant. Under the law of the Federal Republic of Germany (§ 3(2) BRAO) it would certainly be possible to have a division of responsibilities between German Patentanwälte and Rechtsanwälte - so that, for instance, Rechtsanwälte were debarred from acting as representatives in proceedings relating to patent applications and examinations before the German Patent Office. This would also be possible under the law of other Contracting States. The last clause of Article 134(7), first sentence, EPC is therefore necessary, because under national law even an actual legal practitioner might be precluded to some degree from acting as a professional representative in patent matters. That clause prevents a "Rechtsanwalt", "legal practitioner" or "avocat" from having more extensive powers of representation before the EPO than he is entitled to before his national patent office. Article 134(7) is therefore a special rule limited in scope to the corpus of legal practitioners, which exists under various designations in all the Contracting States. It is not permissible to transfer the expression "legal practitioner" - intended to refer to the common-law countries - to the German legal system, for instance through the translation "Rechtspraktiker" (literal translation of "legal practitioner"), and to infer therefrom a right of representation which is not dependent on representatives' being Rechtsanwälte. According to the authentic interpretation laid down at the Munich Diplomatic Conference, the term "legal practitioner" covers in the United Kingdom the professions of "solicitor" and "barrister" (Minutes M/PR/I, point 805). For comparable professions in other Contracting States a correlation has to be sought with the terms "Rechtsanwalt" - "solicitor/barrister" - "avocat". That correlation can probably only be based on the general power of representation of the relevant profession before the courts of the State concerned. Accordingly, Article 134(7) cannot refer to German Patentanwälte, especially since that profession is covered by the transitional provision set out in Article 163 EPC. The meaning which the appellant wishes to give to a term in the English version of Article 134(7) EPC would call into question the arrangements laid down in Article 134(1) to (6) and Article 163 EPC for patent attorneys and all professional representatives in patent matters who are not "legal practitioners". A patent attorney under national law, irrespective of his specialist qualifications and powers of representation in national patent matters, cannot be regarded as a "legal practitioner" within the meaning of Article 134(7) EPC and therefore is not entitled to act as a professional representative before the European Patent Office. This conclusion does not infringe the principle of equality. The precise meaning and legal effects of this principle in the context of the European Patent Convention can be left open. Members of the profession of Rechtsanwalt and comparable professions in the Contracting States are entitled under Article 134(7) EPC to act as professional representatives before the EPO, not by virtue of their status as individual Rechtsanwälte but by virtue of the institution of the profession of Rechtsanwalt as such. In the words of the German law, the Rechtsanwalt is part of the judicial machinery and vested with general powers of representation. This applies mutatis mutandis in the other Contracting States also. Consequently, Article 134(7) EPC cannot be regarded as infringing the principle of equality as between Rechtsanwälte and Patentanwälte. On the national level, too, there are differences between those two professions in point of their powers of representation in patent matters.

ORDER

For these reasons it is decided that: The appeal is dismissed.