Applicants having neither their residence nor their principal place of business within the territory of one of the EPC contracting states ("non-resident applicants") must be represented by a professional representative and act through him in all proceedings established by the EPC.[ 34 ] In such cases a professional representative must be appointed in due time.
any professional representative entered in the directory of professional representatives maintained by the EPO, and
any legal practitioner who is qualified to practise in patent matters in one of the EPC contracting states and has his place of business in that state.
However, up to expiry of the 31-month time limit under Rule 159 EPC, non-resident applicants may either comply with any requirement themselves or act through a professional representative entitled to practise before the EPO. This means that a non-resident applicant may himself, within the 31-month time limit, for example sign and file EPO Form 1200, submit amendments, file a translation of the application, file a request for early processing, etc.
Non-resident applicants who did not themselves take the required steps for entry into the European phase within the 31-month time limit may subsequently perform these and the other procedural steps (e.g. filing of a request for re-establishment of rights) only through a professional representative entitled to practise before the EPO.
Under no circumstances can an applicant act through his agent appointed for the international phase if the latter is not a professional representative entitled to practise before the EPO (see point 465). Further, if such representative is the appointed agent for the international phase, he is not automatically appointed for the European phase. A separate appointment is necessary (see point 114).
The only case in which a new appointment need not be made is if the professional representative was validly appointed in the procedure before the EPO as receiving Office, ISA or IPEA and the appointment expressly extends to representation in the European phase (see point 114).
Non-resident applicants are therefore strongly advised to appoint a professional representative before the EPO in good time, i.e. before they initiate proceedings before the EPO as designated/elected Office, and to indicate this appointment in Form 1200, Sections 2 and 3 (see points 475 ff).
Date retrieved: 30 December 2018
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EPC Implementing Rules
XR.159 EPC The European Patent Office as a designated or elected Office – Requirements for entry into the European phase