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Law & practice

Official Journal October 2014

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Citation: OJ EPO 2014, A99
Online publication date: 31.10.2014

Notice from the European Patent Office dated 4 September 2014 concerning the use of an address for correspondence in proceedings before the EPO by persons acting without a professional representative or agent

I. Introduction

1. Under present practice, in accordance with the announcement by the President of the EPO of 23 October 1980 concerning the use of an address for correspondence by applicants acting without a representative (OJ EPO 1980, 397), legal persons may give, for the purposes of EPO notifications, an address for correspondence which is different from that of their place of business.

2. The present notice broadens the scope of the President’s 1980 announcement, to facilitate the use of an address for correspondence in proceedings before the EPO under both the EPC and the PCT. The reason for revising EPO practice was to allow natural as well as legal persons to give an address for correspondence. The revised practice also offers more flexibility to applicants using the EPO's services under the PCT.

3. Under the revised practice, for applications it is processing in the international phase the EPO will send notifications to an address for correspondence under the conditions set out in Part III below. For European (Euro-direct) applications, and international applications before the EPO as designated or elected Office (in the European phase), the conditions set out in Part IV below apply. This notice makes it clear that an address for correspondence may be used by anyone (e.g. applicants, opponents or patent proprietors) acting in proceedings before the EPO without a professional representative or agent. As explained in Part II below, the use of such addresses is subject to the legal provisions governing (professional) representation.

II. Address for correspondence, and representation

4. The EPO will send notifications to an address for correspondence only if no professional representative (Article 134 EPC) or agent (Rule 90.1 PCT) has been or must be appointed. In other words, the application of the EPC and PCT provisions on representation is not affected by the right to indicate an address for correspondence under the conditions set out in Parts III and IV below.

5. Therefore, in respect of Euro-direct applications and international applications in the European phase, persons who do not have their residence or principal place of business in an EPC contracting state must appoint a professional representative in accordance with Articles 133 and 134 EPC. In the case of multiple applicants, Rule 151 EPC applies.

6. Without prejudice to the applicable PCT provisions (e.g. Rule 90.1(a) PCT), the EPC provisions concerning professional representation (see point 5 above) apply in respect of international applications processed by the EPO in the international phase (Article 27(7) PCT, Article 150(2) EPC).

7. For Euro-direct applications or if acting as designated or elected Office, the EPO will send notifications only to the professional representative under Article 134 EPC, if appointed (Rule 130 EPC). The same applies where an agent is appointed for proceedings before the EPO as receiving Office, International Searching Authority (ISA), Supplementary International Searching Authority (SISA) and/or International Preliminary Examining Authority (IPEA) (Rule 4.4(d) PCT).

III. International applications for which the EPO is acting as receiving Office or as an international authority under the PCT (ISA, SISA or IPEA)

8. For proceedings in the international phase before the EPO as receiving Office, (S)ISA or IPEA, and taking due account of point 6 above, the address for correspondence given may be that of any person in any country. The EPO will accept it irrespective of whether the applicant is a natural or a legal person, whether the address is the applicant’s own or someone else's, and whether the address is in an EPC contracting state.

9. It is recommended that the address for correspondence be indicated in Box No. IV of Form PCT/RO/101.

10. If a valid address for correspondence is indicated, the EPO will send all notifications to the person named as applicant in Box No. II of Form PCT/RO/101 or Form PCT/IPEA/401, or recorded by WIPO's International Bureau under Rule 92bis.1 PCT, at the address for correspondence given in Box No. IV of Form PCT/RO/101, Box No. III of Form PCT/IPEA/401, or recorded by the International Bureau under Rule 92bis.1 PCT. The same applies in the case of multiple applicants, where the EPO will send all notifications to the common representative under Rule 90.2 PCT.

IV. Euro-direct applications and international applications before the EPO as designated or elected Office in the European phase

11. For Euro-direct applications or if acting as designated or elected Office, the EPO, taking due account of point 5 above, will accept an address for correspondence from any person acting in proceedings before it, provided the following conditions are fulfilled:

(a) It is that person’s own address.

(b) It is in an EPC contracting state.

(c) The person explicitly informs the EPO that it is to be used as the address for correspondence.

12. With reference to point 11(a), the EPO will not send notifications to anyone other than this person, since that requires a valid form of representation under Articles 133 and 134 EPC. Therefore, if a person is acting through an employee (Article 133(3) EPC), the address for correspondence must be an address of the person acting, not of the employee. However, to facilitate postal delivery or internal distribution of mail, it may include a sub-division within a firm, provided this is not a different legal person.

13. It is recommended that the address for correspondence be indicated in the relevant box of the EPO form concerned (e.g. Box 9 of Form 1001, Box 1 of Form 1200, Box III of Form 2300). Addresses accepted for proceedings in the international phase but which do not fulfil the conditions set out under point 11 above will not be accepted in proceedings before the EPO as designated or elected Office.

14. For Euro-direct applications, the address used for identification purposes, e.g. in the European Patent Register or the patent certificate, is that of the residence or principal place of business given under "Address" in the relevant EPO form, or otherwise indicated. For applications in proceedings before the EPO as designated or elected Office (European phase), it is the address as published under Article 21 PCT or as recorded by WIPO's International Bureau (Rule 92bis PCT), unless the EPO has been informed of a change in the applicant’s address (e.g. by filling in the relevant box in EPO Form 1200 or separately).

V. Entry into force

15. This notice applies with effect from 1 November 2014 and supersedes as from that date the announcement by the President of the EPO of 23 October 1980 concerning the use of an address for correspondence by applicants acting without a representative (OJ EPO 1980, 397).