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Representation before the European Patent Office: Wikis


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The European Patent Convention (EPC), the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office (EPO).


General rule and exceptions

There is no general obligation to be represented by a professional representative to act in proceedings before the EPO. However, a person not having either their residence or place of business within the territory of one of the EPC Contracting States "must be represented by a professional representative and act through him in all proceedings", except for filing a European patent application. [1] Proceedings include grant proceedings (as applicant), opposition proceedings (as patentee, opponent or intervener pursuant to Article 105 EPC), limitation and revocation proceedings (as patentee), and appeal proceedings (as appellant or respondent). [2]

Representation of persons who must be represented and persons who do not need to be represented but who want to be represented must be by a professional representative, or in some circumstances by an authorised employee [3] or by a legal practitioner. [4]

Professional representatives

Professional representatives bear the title of European patent attorney (EPA). In order to be a European patent attorney, one must: [5]

  • be a national of one of the EPC Contracting States (the President of the EPO may grant exemptions "in special circumstances" [4]); and
  • have a place of business in one of the EPC Contracting States; and
  • either have:
    • passed the European qualifying examination (EQE); or
    • have been a qualified or experienced Patent Attorney as at the entry into force of the EPC in their state (known as the "grandfather clause" [6] - in December 1998, the ratio of registrations under the grandfather clause to those having passed the EQE was two to one [7]).

European qualifying examination

The European qualifying examination (EQE) is a three-day pen-and-paper examination, comprising four papers:

  • Paper A (3½ hours) consists in drafting of claims and introduction (field of the invention, prior art, problem to be solved and its solution[8]) of a European patent application, on the basis of the fictional letter by an inventor describing an invention and prior art documents.
  • Paper B (4 hours) consists in replying to a communication of an Examining Division raising substantive objections to a patent application,[8] such novelty and inventive step objections.
  • Paper C (6 hours) consists in drafting a notice of opposition against a granted European patent, based on a fictitious letter from a client, a European patent to be opposed, several documents and an EPO opposition form.[9]
  • Paper D actually consists in two legal papers:
    • Paper D I (3 hours), which consists in a series of legal questions on the EPC and the Patent Cooperation Treaty (PCT);[9] and
    • Paper D II (4 hours), which consists in a legal case usually requiring analyzing the legal situation of a client and proposing actions to be undertaken to cope with the situation.[9]

The European qualifying examination is held each year, usually at the beginning of March,[10] simultaneously in various cities throughout Europe. [11] In 2006 for instance, it was held in Berlin, Berne, Bristol, Dublin, Helsinki, Madrid, Munich, Paris, Rome, Stockholm, Taastrup, The Hague, and Vienna. In 2010, it is expected to be held in Berne, Bristol, Madrid, Munich, Paris, Rome, Stockholm, Taastrup and The Hague.[12] Dictionaries and reference material can be used during the examination "as long as they are in paper form".[12] The use of electronic devices is however not permitted.[12]

The marking of the Paper C of the EQE 2007, including awarding no point when candidates failed to select the "right" starting document [13] (for assessing the inventive step of some claims) and the blanket addition of 10 points to the grade of all C papers, was strongly criticized. [14] [15] [16]

References and notes

  1. ^ Article 133(2) EPC
  2. ^ Article 133(1) EPC
  3. ^ Article 133(3) EPC
  4. ^ a b Article 134(7) EPC
  5. ^ Article 134(2) EPC
  6. ^ Article 163 EPC
  7. ^ D. Visser, The Annotated European Patent Convention 2000, 15th Edition, (Veldhoven, The Netherlands, 2007), p. 321.
  8. ^ a b European qualifying examination, Guide for preparation, 1st edition (2009), p. 9.
  9. ^ a b c European qualifying examination, Guide for preparation, 1st edition (2009), p. 10.
  10. ^ European qualifying examination, Guide for preparation, 1st edition (2009), p. 7.
  11. ^ EPO web site, Survey, European qualifying examination 2008 (268 p.).
  12. ^ a b c European qualifying examination, Guide for preparation, 1st edition (2009), p. 8.
  13. ^ When assessing the inventive step of claim (defining an invention in a patent or patent application), the practice at the EPO is to use the so-called "problem-solution approach", which includes a step of selecting of one piece of prior art as the closest prior art, i.e. the starting point for the inventive step assessment.
  14. ^ S. Roberts, Comments on Paper C of the 2007 European Qualifying Examination, epi Information 4/2007, pp. 153-155.
  15. ^ Decision of the Disciplinary Board of Appeal of August 28, 2008, D*/07
  16. ^ (French) Laurent Teyssedre, Notation C 2007 : première décision de recours, Le blog du droit européen des brevets, September 17, 2008. Consulted on September 17, 2008.

See also

External links


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