EP 3 611 581 B1 relates to an in industrial controlled and to a method configured to control an industrial activity. It derives from the parent application EP 3 249 481.
Brief outline of the case
The patent was revoked by the OD for infringement of Art 76(1), 84 and lack of IS. The OD considered opposition 1 as being admissible.
The proprietor appealed the decision.
The board confirmed the revocation with a different reason as far as IS is concerned.
The decision is interesting in that the proprietor queried the admissibility of opposition 1, inter alia, by reference to Art 125 and to a decision of the UPC CoA.
Opposition 1 was filed by Cabinet Nübold, whereby Mr Nübold as head of Cabinet Nübold signed the statement of grounds of opposition and the reply to the proprietor’s appeal.
The proprietor’s point of view
The proprietor has first contested the admissibility of opposition 1 for, reasons similar of those given in T 1893/22,
The proprietor argued that Art 133 and 134, together with R 152 and the Decision of the President of the EPO of 12.07.2007, did not constitute a complete and self-contained set of rules on representation in proceedings established by the EPC. National laws governing representation were also relevant.
In the statement of grounds of appeal, the proprietor referred to both German law (§ 181 BGB) and French law (Art 1161 of the French Civil Code) without mentioning Art 125.
The proprietor later contended the existence under Art 125 of a procedural principle that prevented opponent 1 from appointing Mr Nübold as representative, since such an authorisation formed a “self-dealing” situation
Yet, such a self-dealing, also known as “Insichgeschäft” under German law or “transactions intéressées” under French law, was illegitimate and rendered the appointment null and void.
At the OP before the board, the proprietor referred to the Order UPC_CoA_563/2024. Although the order was not supplied, it was apparently quoted to support the argument that general principles of national procedural law prevent Mr Nübold from acting in the present case.
The board’s decision
Contrary to the proprietor’s views, Art 133 and 134, together with R 152 and the Decision of the President of the EPO of 12.07.2007, do constitute a complete and self-contained set of rules on representation in proceedings established by the EPC.
A legal person having their seat in an EPC Contracting State is not obliged to be represented by a professional representative, cf. Art 133(1). Furthermore, persons whose names appear on the list of professional representatives are entitled to act in all proceedings established by the EPC, cf. Art 134.
Opponent 1 is a French company. The fact that Mr Nübold is a professional representative cannot have a negative impact on his competence and ability to represent opponent 1 as the president of the company, since under French law he is entitled to act on behalf of the legal person in all circumstances.
Even if national law were to apply and would prevent the company from appointing Mr Nübold as its professional representative and attorney, still it would not prevent him from representing the company as its president.
The conflict of interest that Art 1161 of the French Civil Code aims to prevent is limited to cases where a representative (agent) acts on behalf of a natural person, not a company. Article 1161 of the French Civil Code is not relevant, as the SASU, although a simplified legal entity, is still a company.
The board noted further that it is unclear what legal procedural gap exists that would need to be filled under Art 125, which is a prerequisite for its application.
Even if these provisions were considered sufficient, they pertain to substantive law rather than to procedural matters, and address conflicts of interest in private legal transactions, not the granting of an authorisation from a company to a representative for legal or court proceedings.
Representation before the UPC
The board quoted, inter alia the following statement from the Order UPC_CoA_563/2024:
“No corporate representative of a legal person or any other natural person who has extensive administrative and financial powers within the legal person, whether as a result of holding a high-level management or administrative position or holding a significant amount of shares in the legal person, may serve as a representative of that legal person, regardless of whether said corporate representative of the legal person or natural person is qualified to act as a UPC representative in accordance with Art. 48(1) or (2) UPCA.”
For the board, this conclusion rests on the specific provisions of the UPCA, in particular Art 48(1) UPCA and R 8.1 RoP UPCA, which require that both natural and legal persons be represented.
The board held that, even if this were regarded as a general principle of the EPC Contracting States within the meaning of Art 125, it could not be transposed to the EPC framework.
The EPC follows the opposite principle: both natural and legal persons may represent themselves, cf. Art 133(1). The only exception concerns parties domiciled outside the EPC Contracting States, cf. Art 133(2).
The rationale for this exception is not to ensure independence and distance from the parties. Instead, its purpose lies in ensuring that parties from legal systems and traditions different from those of the EPC Contracting States are properly represented. The rule also ensures that the EPO is not burdened with notifications outside the EPC territory.
In that context, it is to be noted that principles of procedural law recognised in the EPC Contracting States may be invoked under Art 125 to fill gaps, but not to modify the EPC framework.
Introducing a corollary of the prohibition of self-representation into a system that expressly allows it would however amount to such a modification. Accordingly, the reference to UPC_CoA_563/2024 did not alter the board’s conclusion in the present case.
Comments
The proprietor already tried to challenge the admissibility of opposition 1 in the case dealing with the parent application.
This was however without success, cf. T 1893/22, commented in the present blog. In T 1893/22, the board confirmed the revocation of the parent patent EP 3 249 481 B1.
The present board can only be supported, as otherwise decisions like G 3/97, OJ 1999, 245, would become obsolete.
Representation before the EPO and before the UPC
The order of the CoA UPC has the aim to guarantee that parties before the UPC can only be represented by legal practitioners (or patent representatives with a special qualification), like it is the case before civil law jurisdictions in the contracting states of the UPCA.
Legal basis of the UPC CoA Order
The legal basis of the order UPC_CoA_563/2024 under Art 47(2) EU CFR and Art 6(1) ECHR is highly questionable. It has been taken by a panel composed by 3 LQJ, which is in manifest breach of Art 9(1) UPCA which provides that any panel of the CoA is composed of 3 LQJ and 2 TQJ.
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