Re-establishment: An isolated error in a well-functioning system may not be equivalent to all due care (J 05/18)

What do European patent attorneys have nightmares about? Trying to achieve re-establishment of rights at the EPO must be among the list. A decision of the Legal Board of Appeal (J 05/18), published this week, is a reminder that even with the best systems in place, an isolated error by any representative involved in the case may be catastrophic.

In some jurisdictions, the test for reinstating an application following refusal due to a missed deadline can be relatively low. At the UK IPO, for example, it is merely necessary to demonstrate that the failure to meet the deadline was "unintentional" (UKPA Section 20A). At the EPO, the test is considerably higher. The applicant must show that the deadline was missed despite "all due care" having been taken.  

Legal Background - Requirements of re-establishment

There is a mountain of boards of appeal case law on what constitutes "all due care" (Article 122(1) EPC). "All due care" has been defined as being "as much care as would be taken under the circumstances by the average reasonably competent patentee/representative" (Case Law of the Boards of Appeal, III.E.5.2, J 11/09). If a time limit was missed due to an error, despite an intention on the applicant to meet the time limit, all due care is considered to have been taken if the mistake was an isolated one "within a normally satisfactory monitoring system".

Date checking aids

There is an additional raft of case law on what is meant by a "satisfactory monitoring system" (Case Law of the Boards of Appeal, III.E.5.4). In such a system, an isolated mistake by an assistant may be excusable. However, an isolated mistake by a professional representative, e.g. in double checking a time limit, is generally not considered all due care (T 592/11, R 0018/13). Importantly, EP representatives and responsible third parties acting for the applicant (e.g. US representatives) may be held responsible for taking the necessary care (J 4/07).

The appeal in J 05/18 related to a decision by the Examining Division to re-establish an application (EP12152933.3) following a failure to meet a further processing deadline (Article 121 EPC). The applicant argued that because the failure to meet the deadline was due to an isolated error in an otherwise well-functioning system, the requirement for all due care had been met.

An isolated error in a well-functioning system is not equivalent to all due care

The applicant submitted a detailed description of the series of events leading to the error. Electronic reminder systems were in place in both the US and EP firms. Following notification of the deadline for responding to the examination report from the EP representative, the US representative indicated that they did not want to file a response before the deadline, but "were interested in further processing". The US representative asked for a reminder of the legal processes involved in further processing. This email became of critical importance to the case.

When a notification of loss of rights was issued, the EP representative forwarded this to the US attorneys together with information about the further processing requirements. The further processing deadline was docketed in the system. The US attorney responsible for the case then left the firm. Following a reminder from the docketing system, the newly responsible US representative checked the file, and interpreted the former US representative's email as being instructions for further processing. Instructions regarding further processing were therefore not sent to the EP representative (or sought from the applicant).

The deadline for further processing expired.

Following a routine check of the European Patent Register, the applicant and US representative became aware that the application had been closed. The request for re-establishment of rights was then filed.

The board of appeal (BA) identified the misreading of the email regarding the applicants "interest in further processing"  as the critical mistake leading to the missed deadline. The BA was of the view that the presence of a "well-functioning system" was therefore not decisive in this case. In the BA's view, the letter checked by the US representative, did not give "the slightest indication that the EP representative had already been instructed to request further processing. Quite the contrary, this document clearly demonstrated that no action had been taken at that stage" (r.1.2.3). Furthermore, whilst such an obvious mistake by an assistant may have been excusable, the BA could not excuse a representative for making such a mistake (r.1.2.5).

Therefore, the isolated mistake on behalf of the US attorney in misreading the letter was considered to demonstrate lack of all due care, regardless of any systems that may have been in place. The appeal was dismissed.

Take home message

This case is a reminder that it is not just the EP representative that may be held to high standards of care in battles for re-establishment. The EPO is willing to hold responsible attorneys in other jurisdictions (who may be unfamiliar with EPO law) to the same high standards. In this case, the BA found that the US attorney made an isolated single mistake in misreading an email. The US attorney also did not check for confirmation that the further processing had been filed and there was no follow up from the EP representative. Take home message? If a case is about to be irretrievably closed, it is always a good idea to double check your instructions.