G 0004/95 - Oral submissions by accompanying persons (inter partes proceedings) - #36

Citation rank: 36
No. of citations: 113


G 4/95 is concerned with the question of whether and under which circumstances an "accompanying person", i.e., a person other than the proprietor or its representative, may make oral submissions on either legal or technical issues during oral proceedings in inter partes opposition and opposition-appeal proceedings.

A corresponding request for allowing oral submissions of an accompanying person was made by a party in the underlying appeal case (T 803/93). The referring Board observed that the case law regarding the above question at that time was not consistent.

The Enlarged Board observed that previous case law had applied either a strict view on the issue, or they Boards and Opposition Divisions had allowed oral submissions by accompanying persons on a rather informal basis. The Enlarged Board also pointed out that the EPC distinguishes between the indication of "facts and evidence" and  submissions by way of "argument". The Enlarged Board noted that facts and evidence should normally be submitted at an early stage of the proceedings, whereas submission relating to arguments can be made at any stage of the proceedings, under the discretion of the EPO (point 4 of the reasons).

After considering various provisions of the EPC governing the presentation of facts and evidence and the EPC's system of representation (i.a., Arts. 114(2), 116, 117, 133, 134 EPC), the Enlarged Board came to the conclusion that it is generally possible that an accompanying person makes submissions on legal or technical issues in oral proceedings, however, only under the discretion of the EPO.

The discretion is to be exercised by the EPO using the following criteria:

• Oral submissions by accompanying persons should be requested by the professional representative and the request should include the qualifications of the accompanying persons and should specify the subject matter of the proposed submission (Headnote 2(b)(i)). 
• The request should be made well in advance (Headnote 2(b)(ii)). 
• A request made shortly before the oral proceedings should normally be refused, unless the other party (and the EPO) agrees to the submissions being made (Headnote 2(b)(iii)). 
• The oral submissions should be made under the constant responsibility and control of the professional representative (Headnote 2(b)(iv)). 
• No special conditions apply to qualified patent lawyers from countries other than EPC contracting states (Headnote 2(c).

Remark: See related decision G 2/94 on oral submissions by accompanying persons in ex parte proceedings.

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Headnote:

1. During oral proceedings under Article 116 EPC in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under Article 117 EPC, in addition to the complete presentation of the party's case by the professional representative.
2. (a) Such oral submissions cannot be made as a matter of right, but only with the permission of and under the discretion of the EPO.
(b) The following main criteria should be considered by the EPO when exercising its discretion to allow the making of oral submissions by an accompanying person in opposition or opposition appeal proceedings:
(i) The professional representative should request permission for such oral submissions to be made. The request should state the name and qualifications of the accompanying person, and should specify the subject-matter of the proposed oral submissions.
(ii) The request should be made sufficiently in advance of the oral proceedings so that all opposing parties are able properly to prepare themselves in relation to the proposed oral submissions.
(iii) A request which is made shortly before or at the oral proceedings should in the absence of exceptional circumstances be refused, unless each opposing party agrees to the making of the oral submissions requested.
(iv) The EPO should be satisfied that oral submissions by an accompanying person are made under the continuing responsibility and control of the professional representative.
(c) No special criteria apply to the making of oral submissions by qualified patent lawyers of countries which are not contracting states to the EPC.

The full text of the decision can be found here.

Quotes from random appeal decisions citing G 4/95 can be found here.