T 911/07 – Miss M. May Make Mistakes

The present decision deals with a request for restitutio in integrum (A 122). The professional representative had filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form but his assistant, Mrs. M., although instructed to pay the appeal fee, had omitted to do so.

The decision, although not very exciting in itself, gives a nice overview over the actual case law concerning re-establishment in situations where a professional representative has entrusted certain routine tasks to an assistant.

[4] A 122 provides for an applicant who, in spite of all the due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the EPO, thereby losing a right or other redress, to have his rights re-established upon application subject to the conditions referred to in paragraph 1, above, being met. It is the established jurisprudence of the Boards of Appeal that A 122 is intended to ensure that, in appropriate cases, the loss of substantive rights does not result from an isolated procedural mistake within a normally satisfactory system (J 2/86 and J 3/86).

[5] Whether or not a request for re-establishment of rights may be allowed, depends on whether or not the applicant can show that all the due care required by the circumstances of the particular case was in fact taken to comply with the time limit. With respect to due care, the following principles relevant to the present case were laid down by the Board in J 5/80:

[6] (1) When an applicant is represented by a professional representative, a request for re-establishment of rights cannot be acceded to unless the representative himself or herself can show that he or she has taken the due care required of an applicant or proprietor by A 122(1).

(2) If the representative has entrusted to an assistant the performance of routine tasks, the same strict standards of care are not expected of the assistant as are expected of the applicant or his representative.

[7] As regards the foresaid first condition, the Appellant relied on a computerised time limit monitoring system by which the time limits were checked by himself and his assistant. The Appellant gave proof of these facts by his own sworn statement, the declaration of his assistant and a hard copy of a monitoring list of the computer system. In the Board’s view, this reminder system can be assessed as normally satisfactory to ensure compliance with time limits under the EPC. The double check by the representative and its assistance can be considered a cross check as required by the established case law. There was no need to monitor the time limit for the payment of the appeal fee separately. For the Board it is credible that in the representative’s firm, unless otherwise ordered, the assistant signed and added EPO Form 1010 to the notice of appeal whereby payment of the appeal fee was ensured by reduction from the deposit account. Even if the examples of the EPO Forms submitted by the Appellant do not clearly show whether or not they were signed by an assistant, the statement of the representative and his assistant seems to provide convincing proof that the general rule existed at least in the department where the Appellant’s representative worked.

[8] In the present case, the question arises whether or not the representative’s duty of care relating to the filing of the appeal ceased when he handed over the notice of appeal to his assistant. As a rule, the representative is not obliged to monitor that the outgoing mail is made ready for posting and delivered to the postal service. Such a task can be entrusted to an assistant because the issuance of a letter causes no difficulties. Although the payment of the appeal fee is a crucial event in the appeal proceedings which normally needs special care, the Board can accept the Appellant’s submission that in the monitoring system of its firm the task to file EPO Form 1010 together with the notice of appeal can be considered a routine work which can be trusted to an assistant because no legal or factual difficulties are to be expected in performing this. 

[9] As regards the lower standard of care for assistants as mentioned in point 6(1) above, the jurisprudence of the Boards of Appeal (J 5/80; T 191/82; T 43/96) only excuses under A 122(1)  a singular mistake or error of the employee when this person had been suitable selected, properly instructed and reasonably supervised. In this regard the Board sees no reason to question the statements made by the representative and his assistant. According to these statements, the assistant was well trained and long experienced in the tasks of a patent assistant and in particular fully acquainted with all deadlines and fees to be paid in proceedings before the EPO. The fact that the notice of appeal was filed in due time allows the conclusion that a clear order was given by the representative and that the assistant’s omission to add EPO Form 1010 to this notice was a singular mistake within an otherwise satisfactory system and which could not be detected by the representative in the circumstances of the present case. As regards the routine work of adding EPO Form 1010, the Board holds that in the present case the representative could rely on the oral confirmation from the assistant that the notice of appeal was filed and no further supervision was required. 

[10] As all requirements pursuant to A 122(1)-(3) are fulfilled, re-establishment of rights can be granted. Consequently, the appeal is admissible pursuant to A 106 to A 108. 

Alas, the requests were finally found to lack inventive step and the appeal was dismissed.

To read the whole decision, click here.