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By practicing for EQE, I came across the following EPO Daily D-question:

link to the question: https://e-courses.epo.org/mod/page/view.php?id=11191

An employee of Ford AG, Germany who is not a European patent attorney files a European patent application with the EPO for the American parent company.

(a) May the employee act on behalf of the applicant?

(b) Will the situation be different if the European patent application is jointly filed in the name of the American parent company and Ford AG, Germany?

I got (a) right.

Short answer: No, employee may represent a legal person if authorized, Art. 133(3), but there is no provision for representing any other legal person other than employer, if he/she is not a professional representative.

My answer to (b):

Yes. Ford AG has a principal place in a contracting state and is not compelled to be represented by a professional. Art. 133(1),(2). The American parent does not have principal place in a contracting state, but since the American parent is filing an application, it is not compelled to be represented by a professional. Art. 133(1),(2).

If there is more Applicant, a common representative is preferred to be appointed R41(3). No professional representation is forced by R151(1) as none of the applicants are compelled to be represented by a professional.

It is advised to name an authorized (R. 152) employee of the Ford AG as a common representative. Who can jointly file the Application in the name of American Ford parent and Ford AG.

Official answer to (b):

  • No.
  • An employee may act for Ford AG, Germany provided they are duly authorised (Article 133(3) and Rule 152(1) EPC; Guidelines A-VIII, 1.2).
  • However, the employee may not act for the parent company Ford based in the US.
  • Ford US is not resident in an EPC contracting state, so it must be represented by a professional representative (Article 133(2) EPC).
  • Hence, the EPO will invite Ford US to appoint a professional representative (Rule 57(h) and Rule 58 EPC).
  • The professional representative thus appointed will be deemed to be the common representative of Ford US and Ford AG (Rule 151(1) EPC; Guidelines A-VIII, 1.3).

I'm not convinced by the official answer. Why should Ford US be represented by a professional, if the question is about filing an EP application?

Thank you in advance

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The question is not about filing the application: “May the employee act on behalf of the applicant?” is not limited to filing the European patent application but instead encompasses all proceedings before the European Patent Office.

Besides, the question would make no sense if it were limited to filing, because Article 133(2) EPC expressly provides that no representation is required for non-EPC applicants for filing.

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