Key points
- This is an appeal by the President of the Council of epi against a decision of the Disciplinary Committee to dismiss an appeal against a professional representative. The alleged misconduct is that the professional representative "had failed to transfer a Belgian patent from a company owned by the complainants to them as individuals, resulting in the lapse of the patent."
- The DBA, in reasoning that could be important for the question of who - which (quasi) judicial body - exercises disciplinary oversight over acts of professional representative in proceedings before the UPC: "the jurisdiction of the disciplinary bodies of epi and the EPO as established by the RDR does not cover any and all conduct or activities of a professional representative"
- "It is true that the preamble of the current version of the epi Code of Conduct (last amended on 11 November 2023, OJ EPO 2024, A35) no longer refers to activities related to the EPC ("This Code, adopted under Articles 4(c) and 9(3) of the Founding Regulation, contains the recommendations of Council as to the conduct and activities of Members in so far as related to Members' profession"). However, this does not alter the conclusion set out in the previous point. The Board agrees with the further reasons given in decision D 19/99 (Reasons 5.1) as to why the application of the European disciplinary rules (pursuant to Article 134(8) EPC 1973, corresponding to current Article 134a(1)(c) EPC) is restricted to acts by a European professional representative connected with a European patent and the EPC, as follows.
- It follows from Article 134(1) and (5) EPC that professional representatives are, in principle, the only ones entitled to act in all proceedings instituted by the EPC. Therefore, the disciplinary power delegated by the contracting states in Article 134a(1)(c) EPC must necessarily be understood as relating to their activity as such.
- It is a settled principle of law in the jurisdiction of the same contracting states that provisions enacting disciplinary sanctions that restrict the free exercise of a profession are, like those of criminal law, to be interpreted strictly, and therefore narrowly. Such an interpretation is also necessary to avoid conflicts of jurisdiction between the EPO and national disciplinary bodies. As a consequence of the narrow interpretation of the texts imposing disciplinary sanctions, it is not possible to have these same texts govern, by analogy, other ancillary activities that a professional representative might also engage in.
- Thus, the disciplinary powers of the bodies set up under Article 134a(1)(c) EPC clearly apply only to the activities of professional representatives in relation to their privilege of representation, i.e. those relating to the grant of a European patent.
" The case in hand is, however, exclusively concerned with a national patent. While this national patent served as a priority application for a European patent, the complaint is only about the omission of a transfer of said national patent under the applicable national law. The national parts of the European patent, which claim priority of the national application, are not at issue. The complaint is not related to any provision of the EPC either. The defendant's activities on which the complaint is based thus have no connection with a European patent and provisions of the EPC applicable to the national parts of any such patent (e.g. Articles 65 and 141 EPC). The fact that the defendant is a professional representative does not as such establish the link between the facts of the complaint and the EPC as required by the above case law."
" the Disciplinary Committee rightly denied its jurisdiction and dismissed the complaint."
Obiter: " The Board agrees [...] that a professional representative cannot hide behind the veil of a company to avoid the application of European disciplinary rules."
2.3.3 However, the jurisdiction of the disciplinary bodies of epi and the EPO as established by the RDR does not cover any and all conduct or activities of a professional representative.
(a) The Board agrees with decision D 19/99 (Reasons 5.1) that the former preamble of the epi Code of Conduct (see the version as last amended on 8 May 2001, OJ EPO 2003, 523: "This Code is to govern the conduct and other activities of the members in so far as such activities are related to the Convention on the Grant of European Patents (European Patent Convention) [...]") excluded the possibility of European disciplinary rules being applied to acts performed by a European professional representative solely in relation to national patents, without any connection with a European patent and the EPC.
(b) It is true that the preamble of the current version of the epi Code of Conduct (last amended on 11 November 2023, OJ EPO 2024, A35) no longer refers to activities related to the EPC ("This Code, adopted under Articles 4(c) and 9(3) of the Founding Regulation, contains the recommendations of Council as to the conduct and activities of Members in so far as related to Members' profession"). However, this does not alter the conclusion set out in the previous point. The Board agrees with the further reasons given in decision D 19/99 (Reasons 5.1) as to why the application of the European disciplinary rules (pursuant to Article 134(8) EPC 1973, corresponding to current Article 134a(1)(c) EPC) is restricted to acts by a European professional representative connected with a European patent and the EPC, as follows.
- It follows from Article 134(1) and (5) EPC that professional representatives are, in principle, the only ones entitled to act in all proceedings instituted by the EPC. Therefore, the disciplinary power delegated by the contracting states in Article 134a(1)(c) EPC must necessarily be understood as relating to their activity as such.
- It is a settled principle of law in the jurisdiction of the same contracting states that provisions enacting disciplinary sanctions that restrict the free exercise of a profession are, like those of criminal law, to be interpreted strictly, and therefore narrowly. Such an interpretation is also necessary to avoid conflicts of jurisdiction between the EPO and national disciplinary bodies. As a consequence of the narrow interpretation of the texts imposing disciplinary sanctions, it is not possible to have these same texts govern, by analogy, other ancillary activities that a professional representative might also engage in.
- Thus, the disciplinary powers of the bodies set up under Article 134a(1)(c) EPC clearly apply only to the activities of professional representatives in relation to their privilege of representation, i.e. those relating to the grant of a European patent.
- Lastly, Article 1(1) RDR itself requires such an interpretation in that it stipulates that "[a] professional representative shall exercise his profession ..." (emphasis added; see also the French version "Tout mandataire agr doit, dans l'exercice de ses fonctions, faire preuve ...").
(c) The same limited interpretation applies to Article 1(2) RDR, which recites that "[a] professional representative shall conduct himself in such a manner as not to prejudice the necessary confidence in his profession" (emphasis added). Therefore, the appellant's argument that the decisive point is whether the professional representative's behaviour might prejudice the necessary confidence in their profession cannot actually be understood independently of a direct link to representation before the EPO or activities under the EPC.
(d) Accordingly, while stressing that the power of the disciplinary bodies of epi and the EPO was not solely restricted to activities as a professional representative in proceedings before the EPO, decision D 25/05 (Reasons 4) confirmed that this power did not encompass conduct or activities which were not related to a European patent. D 25/05, as well as D 16/95 referred to in D 25/05, concerned the filing of a translation and/or the payment of fees under the EPC for the national parts of a granted European patent as required by the EPC.
2.3.4 The case in hand is, however, exclusively concerned with a national patent. While this national patent served as a priority application for a European patent, the complaint is only about the omission of a transfer of said national patent under the applicable national law. The national parts of the European patent, which claim priority of the national application, are not at issue. The complaint is not related to any provision of the EPC either. The defendant's activities on which the complaint is based thus have no connection with a European patent and provisions of the EPC applicable to the national parts of any such patent (e.g. Articles 65 and 141 EPC). The fact that the defendant is a professional representative does not as such establish the link between the facts of the complaint and the EPC as required by the above case law.
2.3.5 Therefore, the Disciplinary Committee rightly denied its jurisdiction and dismissed the complaint.
2.4 Since the admissible appeal is not allowable, it must be dismissed.
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