T 1907/20 - Appointing representatives and authorizations

Key points

• The patent has two proprietors, Bosch GmbH and Samsung SDI Co. Ltd (KR), for all designated states. Bosch GmbH is the first-named proprietor.
• The proprietor appeals the decision of the OD. The Notice of appeal, filed on paper, is given on the letterhead of Bosch GmbH and signed by the in-house European patent attorney of Bosch GmbH, who is a professional representative. 
• Is the appeal validly filed?
• Going back all the way to the Request for entry into the EP phase, another European patent attorney (an in-house patent attorney of the first applicant) was appointed as the representative (common representative). That document was signed by the patent attorney himself.
• Question for EQE candidates: why was the professional representative appointed as the common representative? What other configuration could be considered but was not possible in this case?
• The Board, in the German original: "Vielmehr konnte der Beschwerdevertreter [the patent attorney] bereits bei Einreichung der Beschwerdeschrift als gemeinsamer Vertreter der gemeinsamen Patentinhaberinnen im Sinne von Regel 151(1) EPÜ handeln, und zwar ohne weitere Formalitäten, da er persönlich als zugelassener Vertreter aufgetreten ist. "
• "Auch die Bestellung eines anderen gemeinsamen Vertreters der beiden Anmelderinnen [i.e. the different professional representative appointed in EPO Form 1200, Entry into the EP phase, I think]  war kein Hindernis, den Beschwerdevertreter als weiteren gemeinsamen Vertreter der Patentinhaberinnen im Sinne der Regel 152(10) EPÜ anzuerkennen. Eine gesonderte Erklärung gegenüber dem EPA war nicht erforderlich. 
• EPC Rule 152(10): "If a party appoints several representatives, they may act either jointly or singly, notwithstanding any provisions to the contrary in the communication of their appointment or in the authorisation. "
• "Die Einsprechende hat auch nicht bestritten, dass der Beschwerdevertreter als zugelassener Vertreter nach Artikel 134 EPÜ keine Vollmacht von Samsung vorlegen muss, im Sinne von Artikel 1 des Beschlusses der Präsidentin vom 12. Juli 2007 über die Einreichung von Vollmachten (ABl. EPA 2007, Sonderausgabe Nr. 3, S. 128-129)."
• The decision was taken on 10.09.2024. The new decision on the matter (OJ 2024 A75) entered into force on  01.11.2024. 
• Apparently, the Board is bound by this decision of the President. 
• I.e., the in-house European patent attorney of Bosch GmbH can represent Samsung Co. without the need to file a power of attorney from Samsung with the EPO. Of course, if Samsung is unhappy, it could file a disciplinary complaint against the professional representative. 
• "Das Amt brauchte auch nicht von einem Vertreterwechsel im Sinne des Artikels 1, Absatz 2 des Beschlusses der Präsidentin auszugehen: Sowohl der früher für die Anmeldung tätige Vertreter als auch der Beschwerdevertreter waren nur zwei von mehreren Vertretern von Bosch nach Regel 152(10) EPÜ. Es gab keine Anhaltspunkte dafür, dass die Vertretungsbefugnis des einen endete und die Sache von dem einen auf den anderen überging. Beide waren von Anfang an bevollmächtigt, für Bosch und damit auch für Samsung zu handeln."
• From the 2007 decision:  "If the European Patent Office is informed of a change of representative involving professional representatives who are not members of the same association, without being notified that the previous representative's authorisation has terminated, the new representative must file, together with the notification of his appointment, an individual authorisation"
• The German and French texts refer more clearly to a replacement of the representative, which is not the case. 
• The Board sees no reason to request the filing of a Power of Attorney of its own motion, though the Decision of the President leaves the option to request so, also in other cases than a replacement of the representative.
• "In der mündlichen Verhandlung vor der Kammer machte die Beschwerdegegnerin geltend, die fehlende Vertretungs­befugnis des Beschwerdevertreters beruhe nicht auf einer fehlenden Vollmacht, sondern auf dem Fehlen der in Regel 151 EPÜ ausdrücklich vorgesehenen Bestellung."
• Rule 151 is titled in German: "Bestellung eines gemeinsamen Vertreters", English: appointment of a common representative. The actual topic is not the appointment of specifically a common representative, it seems. Rather, it seems to be about terminology: representatives appoint themselves in the procedure. In fact, I'm not 100% sure if a party can simply send a letter to the EPO that they 'appoint' representative X for patent application ZZZ. Should not the representative X themselves write to the EPO that they take responsibility for the case by appointing themself as the representative for the case?
• In other words, we have 1) the procedural requests of professional representatives to be registered as the professional representative for one or more specific patent applications and 2) authorizations (power of attorneys), i.e. documents that prove that the party itself agrees with the registration of a particular professional representative (or association) as the representative for their patent application. 
• "Regel 151 EPÜ verlangt jedoch nicht, dass die Bestellung des Vertreters als gesonderte Erklärung der Anmelderin oder Patentinhaberin [...] erfolgt."
• " Die in Regel 152(1) EPÜ vorgesehene und durch den Beschluss der Präsidentin bewirkte Vereinfachung des Verfahrens [i.e., that a professional representative does not normally need to file a power of attorney] wäre sinnlos, wenn die Parteien zwar keine Vollmacht, aber dennoch eine von der Anmelderin unterzeichnete oder anderweitig ausgestellte Vertreterbestellung einreichen müssten.
• "Die Beauftragung eines zugelassenen Vertreters bzw. die Erteilung einer Vollmacht an einen zugelassenen Vertreter (und gegebenenfalls die anschließende Einreichung der Vollmacht beim EPA im Erteilungs- oder Einspruchsverfahren) gilt als Bestellung eines gemeinsamen Vertreters im Sinne von Regel 151 EPÜ. "
• I don't understand this remark, or perhaps there is a different use of the term "Bestellung" than I proposed above.

With edits 09.09.2025, and with the note that I'm still struggling a bit with the concepts and terminology.

EPO 

The link to the decision can be found after the jump.

J 0002/22 - Interruption of proceedings

Key points

• There is a lot going on in this decision. The applicant is a natural person living in London and acting without a professional representative.
• The application was filed as a PCT application. The applicant entered the European phase late, with further processing. More precisely, he filed Form 1200 on the last day of the period for requesting further processing, using web-form filing. The fees were received by the EPO on 18 October. 
• The EPO issued an invitation under Art.7(3) Rfees on 21 November 2019 to file evidence that payment was initiated on 16 October and pay the (then applicable) surcharge. 
• "With e-mails of 2 January 2020 and 24 January 2020 the appellant was reminded of the deadline to reply to the communication of 21 November 2019 concerning fee payment."
• This is remarkable because email is officially not a permitted means of communication in procedures (still).
• "On 23 April 2020, the appellant submitted a written confirmation by his bank XXX of 11 March 2020 that the payment of fees had effectively been requested on 16 October 2019, but had only been sent two days later."
• I understand the EUR 150 surcharge was paid. 
• "Such evidence was indeed provided, if only on 23 April 2020, by a written confirmation of XXX of 11 March 2020 that the payment of fees had effectively been requested on 16 October 2019, and that it had been sent only two days later, i.e. on 18 October 2019 (notably because of initial doubts on the bank's side that such payment has indeed been the appellant's intention)."
•  "In a telephone consultation on 13 July 2020 with a Formalities Officer, the appellant announced that he had meanwhile "found" the communication of 21 November 2019."
• "Upon an internal investigation, receipts of 25 November 2019 were unearthed, signed by the appellant, confirming handover of the communications of 21 November 2019 to him."
• This is remarkable. I wonder what kind of documents these are that are not included in the file but are only "unearthed" later.
• " With a further communication of 20 October 2020, the Receiving Section informed the appellant that notifi cation of the communication of 21 November 2019 had thus been duly effected, and the time limit for reply ing thereto had expired on 3 February 2020, so that his response of 23 April 2020 had (finally) been too late. The Receiving Section announced their intention to issue a decision rejecting the request for further pro ces sing, and gave the appellant the opportunity to respond within two months. "
• The spurious spacing in the text is from the HTML publication of the decision. 
• " By fax of 4 January 2021, the appellant responded, inter alia stating that he had made the necessary payment on the due date of 16 October 2019, but it had been delayed for two days by his bank, for reasons outside his control. He had been diagnosed with a serious medical condition which had the effect that he could enter fairly suddenly and without warning into periods of diminished cognitive capacity, making ma nage ment of day-to-day correspondence difficult. One such episode occurred late 2019 and into early 2020. It was during this time that the communication of 21 No vember 2019 was sent but due to his health difficulties at that time he was not aware of its arrival and the dead line set therein. [....] He pointed at Rule 142 EPC, according to which the pro ceedings should be interrupted in case of legal incapacity. 
• 4 January 2021 was indeed the first Monday after the EPO's end-of-year closing and hence the last day of the period from 20.10.2020.
• It is remarkable that the pro se applicant points to Rule 142 EPC, a rule that could be easily overlooked even by some EQE candidates.
• The Board finds that proceedings are retroactively interrupted from 21 November 2019, so that the invitation under Rfees7 was not validly notified. 
• At least that is how I understand point 2 of the order; see also para. 35 of the reasons.
• "the valid notification on a natural person as party to the proceedings presupposes their legal capacity (cf. Rule 142(1)(a) EPC; as to the term and the conditions see below). The notification on a legally incapable person who is not properly repre sen ted is null and void, as are other procedural acts involving or regarding them (cf. Articles 467, 468, 473 and 475 French Civil Code (FCC); 170 German Code of Civil Procedure (ZPO), 1(1), 6 Austrian Code of Ci vil Procedure (ZPO); cf. Austrian jurisprudence, see Le gal Information System of the Republic of Austria ,,RIS-Justiz" RS0006948, RS0122203, RS0083724). '" 

A uniform standard for legal incapacity of applicants?

• "Legal incapacity of a person means that they are suffering from a disturbance of their mind which makes them unable to form the necessary voluntary intention to carry out legal transactions binding upon them, e.g. to make valid contracts (Case Law of the Boards of Appeal, 10th ed. 2022, III.D.4.3; J 900/85, OJ 1985, 159). In the context of the procedural system of the EPC, which does not distinguish between civil and proce dural legal capacity (see below), this also means that they cannot act on their own in proceedings before the EPO."
• "The Boards' jurisprudence in this context tells the standards regarding (private) natural persons (i.e. based on the relevant national law) apart from those regarding professional representatives (i.e. a uniform standard based on the autonomous law of the EPC, see Case Law III.D.3.2 and III.D.3.4[...]); J 900/85; J 903/87, OJ 1998, 177)."
• The present Board: "However, there is no stringent reason for making such a distinction, at all, and as to why the principles laid out in J 900/85 for professional representatives should not equally apply to natural persons, i.e. the assess ment be made on the basis of the autonomous law of the EPC"
• I've studied the Travaux to Rule 90 EPC 1973. A relevant passage can be found in 7669/IV/63, page 63, with a discussion of a fundamental difference between French, Dutch and Belgium law on the one hand and German law on the other hand, relating to legal incapacity of natural persons (page 43 of the PDF); concluding on p.64, first paragraph, last sentence, that 'the personal statute' applies in the sense of private international law, i.e. the law of the country of residence.
• The EPO no longer has the individual PDF files of the Travaux on their website, only large ZIP files with collections of files. I can not link to the relevant document or page anymore.
• As a comment, the Legal Board seems to follow the German approach to legal incapacity. There could be valid reasons for doing so, but that is beyond the scope of this blog post.
• "only unified standards according to the autonomous law of the EPC can guarantee equal treatment of the parties in proceedings before the EPO, as an essential element of fair trial"
• So, an applicant/natural person can be 'mentally fit' to conclude contracts under the national law of his/her place of residence and still 'unfit' in the procedure before the EPO, according to this decision.

The facts of the case

• In the present case, the appellant himself ... to support the request for interruption of the proceedings - had put his health issues on the table, together with me di cal documentation: the medical certificates of 3 April 2020, of 26 October 2020, and of 13 September 2021, all from the N.N. Medical Centre. Already according to them, the appellant suffered from a number of medical conditions, specifically recurrent depres sion, PTSD and dissociative seizures, and he had a tendency to experience several months long episodes where he was in a major depressive state, leaving him often unable to leave bed
• "Given the circumstances of the case and the evidence already on file at first instance, the appellant's legal capacity could no longer simply be presumed without further investigation and, in the absence of further medical evidence to the contrary, he could no longer be treated like any other party presumed to be able to act validly in the proceedings on their own, and without proper representation."
• "As the appellant is domiciled in London, the board ap proached the Court of Protection, in particular, which has a main office in London and regional hubs and is responsible for a range of decisions in financial and welfare matters for people in England and Wales who lack mental capacity. "
• " Reaching out to the Court of Protection, and the Office of the Public Guardian (an administrative and super visory body to the Court of Protection, see Part 2, Section 57, of the Mental Capacity Act 2005), did not return any responses. "
• "These further documents, atop the medical documentation already on file, and in the light of the appellant's be haviour and submissions in the proceedings, finally provide sufficient evidence to conclude that the appel lant did not possess legal capacity during a substan tial part of the proceedings, and that this problem per sists to date. In view thereof, further investi ga tions into the appellant's state of health, or even an ex-officio medical examination, could be dispensed with, at least for the time being."

Effects of the interruption

• "as outlined above, the notification of the Receiving Section's communication of 21 November 2019 is null and void, since the appellant was in a state of legal incapacity at that time, and is there fore without effect. The same applies to the entire sub sequent proceedings, i.e. the procedural steps taken by the departments of first instance and the appellant since then. This includes, in particular, the contested decision and its notification.
• These proceedings are thus (to be declared) null and void, with the consequence that the impugned decision is deemed to have never become legally effective. 

Declaration of interruption by the Board

• "The declaratory decision on interruption is to be taken by the board, and there is no room to involve the Legal Division at this stage"
• "The Deci sion of the President of the EPO concerning the res ponsibilities of the Legal Division of 21 November 2013, OJ 2013, 600, did not transfer any powers and competences from the Boards of Appeal to the Legal Division on the basis of Rule 11 EPC ("allocation of duties to the departments of first instance"), but only concerned the allocation of functions between these first-instance departments. "

Further procedure

• "In view of XXX's confirmation, it can be con cluded that the payment of the fees for further processing was made, and that the omitted acts were also completed, in due time. There is no harm in the fact that this confirmation was only submitted on 23 April 2020, outside the two-month deadline set out in the communication of 21 November 2019, since the notifi cation of that communication being null and void could not have triggered such deadline."
• Consequently, the request for further processing was validly made and further processing will have to be granted in the continued proceedings before the first instance. The legal consequences of Article 121(3) EPC will then apply and the proceedings at first instance will have to be further continued by dealing with the appellant's requests for entry into the European phase and for examination by the EPO as designated Office, which were validly filed on 16 November 2019, together with the request for further processing.
• " The UN Convention on the Rights of Persons with Disabilities, having been ratified by the Contracting States of the EPC, and the EPOrg Extension and Validation States, provides:"
• This seems to be an example of the systemic interpretation of the EPC; see the article of McLachlan discussed here (to cite: "This article starts from the proposition that Article 31(3)(c) [VCLT] expresses a more general principle of treaty interpretation, namely that of systemic integration within the international legal system. The foundation of this principle is that treaties are themselves creatures of international law. However wide their subject matter, they are all nevertheless limited in scope and are predicated for their existence and operation on being part of the international law system.")
• "Accordingly, national legal systems sport a variety of safeguards that persons protected by the Convention can enjoy equal access to justice. Notably, there are various mechanisms to ensure that persons lacking legal capacity can participate in legal proceedings through the appointment of (legal) representatives."
• " The appellant is in fact habitually resident in London. The system for dealing with legal incapacity in England and Wales revolves around the Court of Protection, based on the Mental Capacity Act 2005, which can, inter alia, appoint a "deputy" (for property and financial affairs or for personal welfare) to make decisions on behalf of a person who has lost legal capacity ("pro tected party"), and to also represent them as their "litigation friend" in any proceedings to which the deputy's power extends "
• " this system does not appear to provide for an easily accessible procedure for the appointment of a representative at the request of other persons or institutions, or even authorities such as the EPO, without specific permission from the court "
• "The appointment of a deputy as the appellant's liti gation friend/legal representative in accordance with the national procedures of the Court of Protection and with a view to representing him in the present proceedings before the EPO would have been the preferred option under the EPC (cf. Rule 142(1)(a) EPC "... or the person authorised by national law to act on [their] behalf")."
•  I think this part of Rule 142 EPC addresses one of the possible grounds for an interruption, and does not relate to the manner of appointment of a representative of a natural person with mental health problems. Hence, the quote 'cf.' is correct but not very helpful. 
• "Since the appellant is in a state of legal incapacity, as outlined in detail above, he could not validly authorise them directly as his representatives of choice "
• " For the time being, therefore, there is thus no al ternative to the EPO themselves appointing a represen tative, in particular the competent department of first instance, and thus resuming and continuing the proceedings before them."
• "Rule 151(2) EPC provides for the appointment [by the EPO] of a com mon representative for a multitude of applicants, in certain circumstances. The concept of the appointment of a representative for legal proceedings is thus in herent in the system of the EPC, and can, as a matter of principle, be applied to any case such as the present one, where a representative is essential to gua rantee the participation of a legally incapable person as party and thus a fair trial. Such an appoint ment by the administrative or judicial authority of the proceedings is also in accordance with the principles of procedural law generally recognised in the Contracting States to the EPC (see Article 125 EPC)."
• "On this basis, the competent department of first in stance will have to appoint a representative and continue the proceedings. "
• Which is interesting. The Legal Board could perhaps have clarified if this also means that the EPO will pay the invoices of the solicitors or patent attorneys. 
• The procedure will now be resumed under Rule 141(2) (by analogy) once the EPO has appointed the representative. 
• Unlike a court-appointed guardian of a mentally ill person, the EPO-appointed representative will not manage the applicant's bank account (as I understand it) and will not receive a court-approved renumeration. 
• I also wonder when the appointment of the EPO-appointed representative will lapse. I assume when the mental state of the applicant improves to above the threshold of Rule 142(1)(a)? (Incidentally, see his calculation of 4 January 2021 as the last day of the period mentioned above, cf. point 37 of the reasons). 
• I wonder whether the application of Rule 151(2) by analogy is the solution envisaged in Rule 142 for the case of lack of a representative. Rule 142 was amended in 2020 to clarify that the proceedings are resumed once "the European Patent Office has been informed of the identity of the person authorised to continue the proceedings" and " If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion." 
• It is also unclear to me if, under Rule 151(2) EPC which is about multiple applicants, the EPO appoints a professional representative or one of the applicants as the common representative. 

Remedies for Rfees7(4)

• Further processing is not explicitly excluded, nor re-establishment, but there is some old case law stating that the Rfees are 'outside' the EPC (in a case about a debit order filed in Dutch (J170/83). However, meanwhile, it is clear that Rule 139 EPC applies to debit orders (J8/19). Singer EPÜ, notes to the Rfees, is silent on it. 
• The period of Rfees7(4) is specified by the EPO, the applicant could have requested extension of the period before it expired.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0682/16 - Non-human genetically engineered organisms

Key points

• This is a kind of Oncomouse case (opposition appeal T315/03) with a claim directed to non-human organisms comprising a host cell comprising a genetic construct. The Board applies Art. 53(a) and Rule 28(d) in great detail in the preliminary opinion (here) but that opinion does not become case law, alas, since patentee restricts to AR-2 cancelling the claims to the organism. 
• The genetic construct is a gene expression system that can be used to express a gene of interest in the cell. This is similar to T 0606/03. 
• The Board finds a likelihood of animal suffering is established because the claim is so broad so as to encompass cases wherein the genetically engineered animal suffers.
• On the other hand, a medical benefit is not credible because of the breadth of the claim.
• The Board applies the 'correspondence principle'.
• The Board also refers to the 'real test' of T 19/90 (Oncomouse examination appeal).
• The Board comments on the case where, for the purpose of Art.53(a), a claim covers both allowable and non-allowable embodiments.
• Claim 45 directed to the isolated host cell was not opposed.

• Over to the procedural stuff. The decision states that " Several oppositions were filed" and that " An appeal was lodged by one of the opponents (appellant).". The OD found that only a single opposition fee was paid and that there was a joint opposition filed by nine legal persons. I'm not aware that it would be established case law that an individual member of the 'group of joint opponents' may appeal individually. However, the Board does not comment on this in any detail.

• A question for trainees. In the present case, the letters for the joint opponents in the first instance proceedings were signed (only) by a Mr. Then. Mr. Then is neither a professional representative nor a lawyer. Explain why this is not a problem and explain the facts you have to assume for reaching this conclusion. What kind of evidence could the opposition division request from Mr. Then to show his entitlement to act in the proceedings? (normally, the question works out the same in appeal, but see the particularity above, so I limit the question to the first instance proceedings).
• Mr. Then showed up alone at the oral proceedings before the opposition division (besides the professional representative for the patentee) and wishes to present opponents' case. Would this be a problem?

EPO T 0682/16 -  link

Reasons for the Decision

Admissibility of the joint opposition and of the appeal

1. In reply to the statement of grounds of appeal, the respondent contested the decision of the opposition division on the admissibility of the joint opposition and requested the board to dismiss both, the opposition and the appeal, as inadmissible.

2. In its communication pursuant to Article 15(1) RPBA 2007, the board drew the parties' attention to the opposition division's summary in both, its summons to attend oral proceedings and the decision under appeal, of the facts and submissions on the basis of which the respondent argued against the admissibility of the joint opposition (cf. pages 2 to 4 of the Summons to attend oral proceedings; pages 3 to 6 of the decision under appeal). The board further noted that these facts and submissions were not contested in appeal and, indeed, were identical to those put forward by the respondent in appeal proceedings.

3. After consideration of the facts and submissions as well as of the respondent's arguments and the evidence on file, the board informed the parties that it saw no reason to deviate from the findings of the opposition division as regards this issue, namely that "Testbiotech e. V., represented by Mr. Then [as executive director of Testbiotech e.V.], continues to be regarded as opponent and common representative of the joint opposition" (cf. bottom of page 6 in the Summons to attend oral proceedings, and pages 6 to 8 of the decision under appeal).

4. Since the parties have not contested the board's provisional opinion on this issue, the board thus considers the joint opposition and the appeal to be admissible.

Admission of the main request into the appeal proceedings

5. The main request was filed (as auxiliary request 2) in response to the communication pursuant to Article 15(1) RPBA 2007, wherein the parties were informed of the board's provisional opinion on the issues of the appeal. The main request is thus an amendment of the respondent's case and may be admitted into the proceedings only at the discretion of the board (Article 13(1) RPBA 2020).

6. The appellant has not provided any reasons against the admission of this request into the appeal proceedings.

7. By deleting claims 48 to 53, the respondent addressed all issues raised by the appellant and by the board in its communication. The main request does not give rise to new objections and contributes to the efficiency of the procedure.

8. Therefore, the board, in the exercise of its discretion (Article 13(1) RPBA 2020), admits the main request into the appeal proceedings.

Main request

9. In the present case, the opposition was only directed against claims 48 to 53 to the extent that they related to "a non-human organism" comprising a host cell of claim 45.

10. The main request no longer contains claims directed to "a non-human organism". Thus, it overcomes all grounds of opposition. This has also been acknowledged by the appellant.

11. Therefore, the patent can be maintained on the basis of the main request and a description to be adapted thereto (Article 111(2) EPC).

Order

For these reasons it is decided that:

1. The joint opposition and the appeal are admissible.

2. The decision under appeal is set aside.

3. The case is remitted to the opposition division with the order to maintain the patent on the basis of claims 1 to 51 according to the main request filed on 8 April 2020 and a description to be adapted thereto.