J 0011/94 (Pleading by person other than an authorised represenative) of 17.11.1994

Summary of Facts and Submissions

I. (a) In the case of European patent application No. 92 118 493.3 the appellants were informed in accordance with Rule 51(4) EPC of the text in which the examining division intended to grant the patent. In their reply the appellants proposed certain amendments, which the examining division approved. The appellants were accordingly invited pursuant to Rule 51(6) EPC to pay the fees for grant and printing and to file a translation of the claims.

(b) The appellants replied as follows:

"We assume that in the present case (too) the EPO takes the view that a 'Form 2006' cannot be issued until August 1994 under the strict requirements of the EPC.

"We request immediate written confirmation that this is your view. The appeal is to be allowed separately (Art. 106(3) EPC)."

The Formalities Section decided on 4 May 1994 that the request to issue the decision to grant sooner than laid down in Article 97 in conjunction with Rule 51 EPC could not be allowed.

(c) The appellants filed an appeal in due time and form. In their statement of grounds dated 3 June 1994, they requested first of all that

1. the contested decision be set aside and

2. it be arranged or ordered that the decision to grant a European patent be issued immediately and the mention of grant in the European Patent Bulletin be made without delay."

They asked the Formalities Section "to submit only photocopies of the files (...) to the board of appeal so as not to delay the normal course of the grant procedure (...)". They repeated a corresponding request to the board in the supplement to their notice of appeal dated 25 July 1994, in which they dropped their request under point 2 above. In their "detailed" statement of grounds filed on 22 July 1994 and supplementing their "summary" appeal they requested that a date be set for oral proceedings to be held as soon as possible and dispensed with the need for the customary period of notice.

(d) The board fixed oral proceedings for 22 September 1994. In a communication accompanying the summons, attention was drawn to doubts about the admissibility of the appeal. The decision to grant had already been issued on 11 August 1994 and publication of the mention of grant was scheduled for 21 September 1994. It was possible therefore from the start that the board would have had no chance of speeding up events by its decision. In any case, the sole remaining request for the contested decision to be set aside could no longer influence the rest of the procedure.

(e) In the oral proceedings the appellants were represented by their professional representative. He was accompanied by the former chairman of the Legal Board of Appeal, who had retired at the end of 1992. The representative requested that

"the contested decision be set aside and that this be subject to the proviso that it be found that the mention in the Bulletin of 21 September 1994 was not contrary to law and that the European Patent Office's examining division was not to correct the date on which it took legal effect."

(f) Even before the subject of admissibility was discussed the representative asked that the former EPO judge be allowed to make submissions in addition to his own pleading. The Chairman drew attention to possible reservations, and in particular to two mutually opposing decisions on this point: T 80/84 (OJ EPO 1985, 269) and T 598/91 (OJ EPO 1994, 912). The appellants' representative thereupon proposed that the points of law which formed the subject of his request be referred to the Enlarged Board of Appeal.

(g) After deliberation by the board, the Chairman announced the referring decision set out in the Order below.

II. (a) After the oral proceedings a submission was received from the appellants, which contained in the reference the reference number of the appeal procedure, the application number, the title of the invention, the applicants' name and the words "Withdrawal of appeal" in bold type. The reference was separated from the remainder of the page by a horizontal line below which there was no further text. Below an empty space representing several lines there was nothing but the representative's signature and his typewritten name.

(b) On 6 October 1994 the board Registry sent the appellants a copy of the minutes. The accompanying letter contained the following additional comment by the registrar: "Your declaration of withdrawal dated 22.9.1994 has been received".

(c) By a submission dated 12 October 1994 the appellants replied that no explicit withdrawal had been declared. Citing examples, they pointed out that all their submissions in the present proceedings had shared the same format, containing a headword in bold type above a horizontal line. Below the line there were detailed comments and declarations, except in the letter dated 22 September 1994. There was no reason why the Enlarged Board of Appeal should not be allowed to answer the point of law raised.

Reasons for the Decision

1. The decision whether the former EPO judge may plead before the board in the present proceedings depends on the question of law whether a person not personally entitled to act as a representative before the EPO may be given the opportunity to make submissions during oral proceedings in addition to the professional representative's pleadings.

1.1 This question has been answered differently by two boards:

1.1.1 Technical Board of Appeal 3.4.1 answered the question in the negative in its decision T 80/84 (loc. cit.). It based its answer on the fact that representation in oral proceedings could only be undertaken by persons so entitled under Articles 133 and 134 EPC, ie professional representatives in accordance with Article 134(1) EPC, under particular circumstances legal practitioners in accordance with Article 134(7) EPC and employees of parties in accordance with Article 133(3) EPC.

1.1.2 On the other hand, in T 598/91, Technical Board of Appeal 3.2.2 allowed a person accompanying a party or his representative to plead under the supervision and on the responsibility of the latter. It examined decision T 80/84 critically and expressed the view that a distinction had to be drawn between the concepts of "pleading" and "representation": "representation" meant acting in lieu of someone for the purpose of exercising a right while "pleading" merely meant developing arguments orally. Board 3.2.2 took the view that the supplementary pleading of an assistant or expert could be beneficial in resolving technical or legal aspects of a case. On the basis of this differentiation between pleading and representation, the board expressly departed from T 80/84 by concluding that it was within the discretion of the board to give or withdraw its permission for an accompanying person to plead.

1.1.3 Reference is further made to decision T 843/91 of Technical Board of Appeal 3.3.1 (OJ EPO 1994, 818), in which it was permitted for an accompanying person to give further explanations of technical matter on the basis of Article 117(1) EPC (loc. cit., point 9.3 ff of the reasons for the decision). This decision does not relate to pleading on questions of law, which is what is under discussion in the present proceedings.

1.2 In view of these discrepancies the board considers that a decision by the Enlarged Board of Appeal is required in order to ensure uniform application of the law. The parties ought to be able to know in advance who is allowed to speak during oral proceedings so that they have the opportunity to prepare properly for the proceedings and make a suitable contribution to the application of the law.

1.3 In the event that the question referred under point 1 is answered in the affirmative, the board considers it likely that basic rules for exercising such discretion will be laid down on the basis of certain criteria. Although the relevant circumstances of each individual case always have to be taken into account when exercising discretion, circumstances that recur in typical groups of cases ought to be dealt with uniformly. Such circumstances could for example relate to the questions to be settled. In this respect it ought to be decided whether pleadings by an accompanying person can serve equally to clarify technical and legal matters. With regard to the group of people to be authorised, an important question might be whether a certain minimum qualification is to be required. Finally, a distinction can be made according to the purpose of the pleading by an accompanying person, whether it must always serve to further the proceedings or may also serve training purposes prior to the acquisition of the entitlement to act as a representative in the field of industrial property rights. In the interests of legal certainty, the board considers it a question of fundamental importance whether, for certain groups of cases, there are uniform assessment criteria for the discretionary decision to be taken (Question 2(a)).

1.4 The board has singled out such a group in sub-question 2(b).

1.4.1 The board does not consider it impossible that, when former board members appear in oral proceedings, the public might gain the impression that former members' personal connections with current members, arising from their previous work together, could colour the decision to be taken. Such an impression could destroy the public's trust in the independence and objectivity of case law and damage the boards' reputation, even where, in the particular case in question, there was no objective evidence to support such an impression.

1.4.2 Such considerations cannot simply be dismissed from the outset, particularly since national legal systems within the field of application of the EPC have deliberately taken precautions to avoid the impression of undue influence being exerted on case law in comparable situations.

1.4.2.1 In France, Article 9-1 of decree No. 58-1270 of 22 December 1958 in the version of the organic law No. 94.101 of 5 February 1994 stipulates that former judges are forbidden for five years from working as or for lawyers in their former judicial district.

1.4.2.2 Likewise, in Germany, Article 20(1) No. 1 of the Bundesrechtsanwaltsordnung [Federal order on lawyers] stipulates that an applicant is not to be admitted as a lawyer in a regional judicial district in which he has been active as a judge or established civil servant within the last five years.

1.4.2.3 In England and Wales, former judges wishing to return to the legal profession are in principle not readmitted to the Bar (Halsbury's Laws of England, 4th ed. reissue, London 1989, Vol. 3(1) Barristers, paragraph 441).

1.4.3 The exercising of discretion in deciding whether or not to allow the pleadings of an accompanying person may restrict professional opportunities for former board members. A starting point can be found in the law deriving from the EPC. The Service Regulations adopted by the Administrative Council in accordance with Article 33(2)(b) EPC regulate the legal status of EPO employees. Article 19 ServRegs obliges former employees to behave with integrity and discretion as regards the acceptance of certain appointments or benefits. The question is whether this very general obligation can, in concrete terms, amount to a prohibition on certain activities. One consideration here could be that former board members in particular are in some way required to avoid activities which could give the public cause to doubt the objectivity of case law and equality of prospects in appeal proceedings.

1.5 The relevance of the point of law referred does not in this case depend on whether or not the appeal is admissible, since the former EPO judge should be given leave to speak, in particular also on the question of admissibility. A decision on whether or not he is authorised to participate must therefore precede any decision on the admissibility of the appeal.

2. The point of law remains relevant even after a decision on it has been announced.

2.1 The appellant did submit a letter containing the words "withdrawal of appeal". However, the context of the preceding events and the format of the letter create the impression that the words "withdrawal of appeal" are not a declaration in themselves but are intended only as a reference to indicate the subject-matter of the letter, with the result that the actual declaration regarding procedure could be expected to follow. This is confirmed by looking at the four preceding letters from the appellants' representative in the present proceedings. All share the same format, which consists of a reference and a horizontal line, followed in the middle of the page by a declaration regarding procedure. It is this declaration that is missing in the letter dated 22 September 1994. The withdrawal of the appeal is by no means the only possible explanation for the reference chosen. It is also conceivable for example that the appellants' representative intended to announce that - although he still had to discuss it with the appellant - he was considering withdrawing the appeal in order thus to spare the board the work of drafting the written reasons for the decision.

2.2 For reasons of legal certainty any declarations regarding procedure must be unambiguous, particularly - because of their consequences - declarations terminating the proceedings. As explained in 2.1, the meaning of the submission dated 22 September 1994 could not be clearly established. The submission therefore does not constitute the effective withdrawal of the appeal. Even before the board could have informed the appellants accordingly, their representative had announced by a communication dated 12 October 1994 that the submission dated 22 September 1994 was not intended to declare the withdrawal of the appeal.

ORDER

For these reasons it is decided that:

The following points of law are referred to the Enlarged Board of Appeal:

1. May a board of appeal exercise discretion in deciding whether or not a person not entitled under Article 134(1) and (7) EPC to represent parties to proceedings before the EPO may make submissions during oral proceedings in addition to the pleadings by the professional representative?

2. If the answer to question 1 is "yes":

(a) What criteria must the board observe when exercising this discretion?

(b) Do special criteria apply to former board of appeal members?