J 0016/96 (Association of representatives) of 14.7.1997

Summary of Facts and Submissions

I. In a letter dated 10 January 1996 to the European Patent Office, the company X applied to register its patent department as an association of representatives within the meaning of Rule 101(9) EPC. The association was to consist of three professional representatives, identified by name, who were employees of the said company.

II. The European Patent Office informed the applicant on 23 February 1996 that its patent department could not be registered as an association of representatives. An association of representatives was to be taken as meaning an association consisting solely of professional representatives in private practice. This was clear from the "Communication on matters concerning representation before the EPO" (OJ EPO 1979, 92). Since the members of a company's patent department were not considered to be representatives in private practice, there could be no question of granting them registration as an association.

III. Company X thereupon requested that an appealable decision be issued. This was done on 22 April 1996. In its statement of reasons, the Legal Division of the European Patent Office explained that the interpretation of the term "association of representatives" as an association of professional representatives in private practice was based on a decision dating from 1978 of the Administrative Council of the European Patent Organisation regarding the interpretation of Rule 101(9) EPC. This set out the view that professional representatives other than those in private practice could not belong to such an association. The Administrative Council had based its interpretation of the law on the intention of the legislator, who had only been thinking of persons in private practice when drafting paragraph 9. The Council had also made it clear that, on this interpretation, a professional representative was to be regarded as being "in private practice" only if he himself was a patent attorney in private practice or if he was employed by such a person. Rule 101(9) EPC did not specifically refer to "representatives in private practice" but used the general term "representatives". Nevertheless, the interpretation given by the Administrative Council was binding on the European Patent Office. The applicant's employees were neither in private practice themselves, nor were they employed by a representative in private practice. The application for registration as an association was therefore to be refused.

IV. The applicant appealed against this decision on 29 April 1996 and filed a written statement of grounds on 4 July 1996, setting out the following main arguments:

(i) The Legal Division of the EPO had itself admitted that Rule 101(9) EPC did not contain the term "representative in private practice". However, the crucial point was that the distinction between "representative" and "representative in private practice" did not appear anywhere in the EPC. There was no basis whatever in the Convention for the term "representative in private practice", introduced in the decision of the Administrative Council regarding the interpretation of the relevant Rule. This meant that professional representatives employed by a company were placed at a disadvantage, arbitrarily and with no legal basis, which could not have been the legislator's intention.

(ii) In the contracting states, eg in Switzerland, firms of patent attorneys were increasingly being established as joint-stock companies. The representatives working for such firms were employees of a joint-stock company, not employees of a representative in private practice according to the Administrative Council's interpretation of the requirements under Rule 101(9) EPC for registration as an association. As a result, in these cases, the Council's interpretation was not even applicable to representatives in private practice.

(iii) Company X belonged to the group X and comprised, inter alia, the group's patent department. Company X itself did not hold any patents; instead, through its patent department, it dealt primarily with patent and trade mark matters concerning other companies in the group X. However, its clients also included other companies which were entirely independent of the group. The activities of the patent department were therefore largely identical with those of a firm of patent attorneys in so-called private practice. The fact that the professional representatives were employees of a joint-stock company should not lead to the refusal of registration as an association.

(iv) For patent departments of companies, registering the professional representatives working there as an association could be particularly helpful in simplifying internal procedures and establishing a clear legal position with regard to authorisation.

V. In its summons to oral proceedings, issued on 5 June 1997, the Board pointed out that an association within the meaning of Rule 101(9) EPC had to consist of representatives, ie persons entitled to act in proceedings before the EPO. However, the previous correspondence indicated that some of the persons acting on behalf of Company X were neither professional representatives nor members of the association for which registration was sought. On these grounds alone, it was not possible to apply for, in the name of Company X, or obtain under this name, a registration of an association within the meaning of Rule 101(9) EPC.

VI. In a letter dated 12 June 1997, the representative of Company X thereupon stated that the request for registration applied only to the three persons originally named, all of whom were professional representatives. The application for registration had only been made on behalf of Company X in order to document the employer's approval. However, the application could be renewed in the name of the three professional representatives by one of them acting on behalf of all three, if the Board saw fit to allow such a retrospective substitution.

VII. Oral proceedings before the Board took place on 14 July 1997. The chairwoman began by pointing out that the question of admissibility of a substitution of party had to be resolved first. Such a substitution would not occur if instead of the original applicant, Company X, the three professional representatives named in the original application themselves became the applicants. A substitution of party was comparable to a change in a statement of claim, which, according to general principles of procedural law, was only admissible if it served a useful function.

VIII. The representative of Company X, one of the members of the association for which registration was sought, thereupon requested, in his own name - A, Reg.-No. xx xxx - and on behalf of the professional representatives B, Reg.-No. xx xxx, and C, Reg.-No. xx xxx, that the contested decision be set aside and the designated persons be registered as an association under the name "Company Patent Department X", c/o Company X, Address.

The substitution of party involved with this request served a useful function since allowing it would avoid renewed proceedings with the new applicants.

Regarding the facts of the case, the representative explained that the restructuring of Company X, initiated about ten years previously, had led to the creation of a large number of subsidiary companies with separate legal identities, which greatly aggravated the problems of administering authorisations in the patent department. For a company patent department, the provision under Rule 101(9) EPC for the authorisation of an association of representatives offered a useful way of simplifying matters in this area. To this extent, there was no longer any difference between a patent department and an ordinary firm of patent attorneys. In contrast to the latter, there was not even a risk of conflict over responsibility for clients in the event of a member's leaving the association. In sum, therefore, the provision under Rule 101(9) EPC for the authorisation of an association of representatives appeared particularly suitable for company patent departments in their modern form.

Reasons for the Decision

1. The appeal is against the decision of the Legal Division of the European Patent Office refusing the application of Company X to register three of its employees as an association of representatives under the name of Company X. The original applicant was adversely affected by this decision. It filed the appeal in due form and time. The appeal is therefore admissible.

In the course of the appeal proceedings, the requests have been changed in such a way that the three representatives employed by Company X are now themselves the applicants for registration as an association. The Board sees fit to allow this substitution of party in the present proceedings. This serves a useful function on grounds of procedural economy, as the substitution makes it possible to avoid a repetition, for purely formal reasons, of the first-instance proceedings. Moreover, as the present proceedings are ex parte, no other parties are affected by this substitution.

2. The contested decision is based on the interpretation of the provision of Rule 101(9) EPC by the Administrative Council of the European Patent Organisation at its 4th meeting from 19 to 21 December 1978 (see CA/PV 4). According to a decision taken at that meeting by the Administrative Council, an association of representatives is to be regarded as meaning an association consisting solely of professional representatives in private practice. The department of first instance considered itself bound by this interpretation. The first question is whether this also applies to the boards of appeal.

2.1 Under Article 33 (1)(b) EPC, the Administrative Council of the European Patent Organisation is competent to amend the Implementing Regulations. However, the Convention does not expressly authorise the Administrative Council to take generally binding decisions on the interpretation of the Convention. In the law of international organisations, it is a recognised principle that bodies competent to lay down internal law may claim a corresponding degree of competence to interpret that law (see Seidl-Hohenveldern, Das Recht der Internationalen Organisationen (...), 5th ed., p. 233, No. 1614). In so far as the decision on a matter of interpretation - as in the present case - concerns a provision of the Implementing Regulations, the Administrative Council acted within the scope of its authority. The appellants have not disputed this.

2.2 However, this does not answer the question of the extent to which such decisions of the Administrative Council are binding on the boards of appeal. Under the Convention (Article 106 ff EPC), the boards of appeal are the designated judicial body to decide on appeals in specific cases. Their tasks include, in particular, the interpretation of the provisions of the Convention, including the Implementing Regulations and the Protocols (Article 164(1) EPC). The necessary degree of judicial independence is provided for by Article 23(3) EPC, which stipulates that the members of the board shall not be bound by any instructions and shall comply only with the provisions of the Convention.

A decision of the Administrative Council concerning a question of interpretation cannot therefore have any formal binding effect on the boards of appeal, nor can such a decision be taken as an instruction to be followed in the boards' decisions.

2.3 However, in interpreting the provisions of the Convention the boards have to consider all elements relevant to interpretation, which in this case include the above-mentioned decision of the Administrative Council concerning a question of interpretation. Although the decision is not binding on the board of appeal, it may nevertheless be taken into account for purposes of interpretation.

3. According to consistent board of appeal case law, for the purpose of the interpretation of the European Patent Convention the rules of interpretation laid down in the Vienna Convention on the Law of Treaties dated 22 May 1969 are to be applied (see G 5/83, OJ EPO 1985, 64, and the communication headed "The interpretation of international treaties...", OJ EPO 1984, 192). Under the general rule of interpretation in Article 31(1) of the Vienna Convention, the EPC is to be interpreted "in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose". By the same token, under Article 31(3)(a) of the Convention, "any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions" must be taken into account.

In view of the above, the question arises of the significance to be attached, in interpreting the provisions of Rule 101(9) EPC, to the above-mentioned decision of the Administrative Council.

3.1 First, it should be noted that Rule 101(9) EPC was not an integral part of the Convention signed on 5 October 1973 at the Munich Conference, but was introduced into the Convention subsequently, by a decision of the Administrative Council of 20 October 1977 which entered into force on 1 February 1978. The above-mentioned decision of the Administrative Council concerning the interpretation of this provision was taken even later (see point 2 above). Therefore, neither Rule 101(9) EPC itself nor the decision regarding its interpretation is based on an agreement of the contracting states; instead, both the Rule and the decision represent law established by the European Patent Organisation itself. To this extent, the rules of interpretation in the Vienna Convention are applicable only mutatis mutandis to the present case.

3.2 Here, the Administrative Council's decision regarding the interpretation of Rule 101(9) EPC has essentially the same significance as a subsequent agreement, under the Vienna Convention on the Law of Treaties, between the parties regarding the interpretation of the treaty or the application of its provisions (Article 31(3)(a) of the Vienna Convention). In its significance for the interpretation of Rule 101(9) EPC, the Administrative Council's decision therefore is to be considered of equal standing alongside the general rule of interpretation in Article 31(1) of the Vienna Convention (see point 3 above).

3.3 In the present case, the rule of interpretation in Article 31(4) of the Vienna Convention on the Law of Treaties is not applicable. This rule provides that a special meaning shall be given to a term if it is established that the parties so intended. However, on the basis of the preparatory work in drafting Rule 101(9) EPC, it is impossible to recognise any such clear intention on the part of all the parties regarding the expression in question (see point 4.4 below).

4. Applying the rules of interpretation explained above, the Board has arrived at the following conclusions in the present case:

4.1 Rule 101(9) EPC has to be seen in the systematic context of Articles 133 and 134 EPC, concerning representation in proceedings established by the Convention. These Articles provide, in particular, that natural or legal persons must in principle be represented in proceedings before the European Patent Office by "professional representatives" (Article 134(1) EPC), although, subject to certain conditions, the functions of a professional representative may be exercised by a legal practitioner (Article 134(7) EPC). Employees who are not professional representatives fall into a separate category, since they cannot act as representatives.

The term "professional representative" therefore refers to a group of professional persons whose members are all equally entitled to act on behalf of parties in proceedings established by the EPC (Article 134(4) EPC), irrespective of whether they are in private practice or are employed in the patent department of a company. This equality of status is also expressed in the Regulation on discipline for professional representatives (RDR), adopted by the Administrative Council on the basis of Article 134(8)(c) EPC. The rules of professional conduct laid down in that Regulation apply to all professional representatives, who are also subject to the same disciplinary measures in the event of failure to comply with the rules (Article 4 RDR).

4.2 The Implementing Regulations for Articles 133 and 134 EPC are found in Rules 100 to 103. Rule 101 EPC contains various regulations regarding the authorisation of representatives acting before the European Patent Office. In the provisions of this Rule, the term "representative(s)" is not limited to professional representatives. This follows from the fact that the obligation under Rule 101 EPC to file authorisations is recognised as also applying to legal practitioners entitled to act as representatives (see the decision of the President of the EPO dated 19 July 1991 on the filing of authorisations, OJ EPO 1991, 489). However, neither in the provisions of Rule 101 EPC, nor in the Articles 133 and 134 EPC to which Rule 101 relates, is any distinction drawn between representatives in private practice and other representatives.

4.3 These findings also apply in particular to paragraph 9 of Rule 101 EPC.

The basic purpose of Rule 101(9) EPC is to ensure that a party appointing several representatives can authorise them as an association instead of singly. This of course does not mean that the association is entitled to act before the EPO; only its individual members are so entitled. There is no risk of this arrangement being abused, as long as it is guaranteed, in accordance with previous Office practice, that all the persons practising as members of the association are entitled to act as representatives before the EPO and that the party making the authorisation has not been deceived about the composition of the association. These requirements may be met regardless of whether or not the members of the association are in private practice. If the requirements are met, the distinction referred to above is therefore irrelevant, as in the case of an individual authorisation.

There is no basis in the Convention for the previous Office practice of applying Rule 101(9) EPC only to professional representatives who are "in private practice".

4.4 This interpretation of Rule 101(9) EPC is also consistent with the Convention's general aim of obtaining the protection of inventions in the contracting states by a single procedure for the grant of patents (see the preamble to the Convention). When Rule 101(9) EPC was first introduced, it was noted that the provision was to be applicable to various countries, with differing national legal provisions and traditions, where representatives have often pooled their resources by forming some kind of association, such as a company.

In view of this, Rule 101(9) EPC was reworded, replacing the original terms "partnership" and "Sozietät" with the more general expressions "association of representatives" and "Zusammenschluss von Vertretern". The French version "groupement de mandataires" remained unchanged (see CI/GT VI/166d/77 of 20 April 1977). In this context, there is therefore no reason to interpret the term "association of representatives" in a way which limits its meaning.

5. Although the interim conclusion from this interpretation of Rule 101 (9) EPC is clear, it is also necessary to take into account the decision of the Administrative Council concerning the interpretation of the Rule (see point 3.2 above).

5.1 The decision has its origin in a proposal from the President of the European Patent Office, placed before the Administrative Council in 1978, that Rule 101(9) EPC be deleted (see CA/55/78). The main reason for this suggestion was the divergence of opinion among the members of the Council of the Institute of Professional Representatives about the criteria to be applied in assessing whether a partnership was an association of representatives and whether a company or the patent department of a company could be regarded as an association of representatives. In particular, misgivings were expressed about the possible abuse of Rule 101(9) EPC as a means of circumventing the obligation under Article 133(2) EPC to act through a professional representative.

Regarding these misgivings, the Board finds that there is no reason to fear such an abuse of Rule 101(9) EPC, even if the limitation to representatives "in private practice" is removed, as long as the above-mentioned requirements for the existence of an association of representatives are met (see point 4.3). Circumventing the obligation under Article 133(2) EPC to act through a professional representative is out of the question, since the requirement that each member of an association be entitled to act before the EPO - irrespective of whether he or she is "in private practice" - is predicated on the existence of a place of business or employment in one of the contracting states (see Rule 102(2)(c) EPC).

5.2 At its 4th meeting in December 1978, the Administrative Council rejected, by a qualified majority, the President's aforementioned proposal to delete Rule 101(9) EPC. This clearly shows that the Administrative Council wished to retain Rule 101(9) EPC in its existing form.

However, the Council agreed to issue the above-mentioned decision on the interpretation of Rule 101(9) EPC, which was drafted by an ad hoc group during the meeting (see point 2 above). The main purpose of this was to eliminate ambiguities in the application of the Rule in question.

5.3 The appellants have argued that this was unsuccessful, at least from a present-day point of view. There is currently a growing number of patent law firms of a mixed type, whose legal form and spectrum of activities place them somewhere between the classic partnership of patent attorneys and the company patent department. In view of this, the criterion of private practice now appears more likely to raise further questions of delimitation than to eliminate ambiguities.

5.4 In the light of these findings, the significance of the Administrative Council's decision on interpretation is outweighed by the other elements relevant to the interpretation. These clearly speak in favour of the interpretation put forward by the appellants, according to which an association of representatives under Rule 101(9) EPC is not restricted to professional representatives in private practice.

6. The registration, requested by the appellants who are all professional representatives, of an association under the name "Company Patent Department X", c/o Firm X, Address, therefore fulfils the requirements of Rule 101(9) EPC. The Board satisfied itself during the oral proceedings, by hearing a declaration to this effect by a member of the association, that only the three designated representatives are acting professionally under the name "Company Patent Department X". It is therefore sufficiently certain that the composition of the group of representatives authorised under this name as an association is immediately clear to any party making the authorisation.

ORDER

For these reasons it is decided that:

1. The decision of the Legal Division is set aside.

2. The association of the professional representatives A, B and C under the name Company Patent Department X, c/o Company X, Address, is acknowledged.

3. The case is remitted to the department of first instance with the order to enter the association referred to in point 2 in the Register of European Patents.