Monday, 10 May 2010

T 836/09 – The Lady And The Box

What would a patent attorney be without his/her assistant? Unfortunately, on a case law blog, assistants are mentioned only when they make mistakes (see my recent post) or even go crazy (another recent post). The present decision is no exception. It deals with a request for re-establishment following an error by Mrs P. who inadvertently sent a statement of grounds of appeal to the German patent office (DPMA) instead of sending it to the EPO. Some time ago (until December 1, 2005), there was an Administrative Agreement between the EPO and the DPMA which would have avoided any loss of rights, but the President of the EPO was criticized for having exceeded his powers when signing this Agreement and the Agreement was terminated.

The whole decision is worth reading, but it is the part dealing with the admissibility of the request which I found most interesting.

[4.1] Compliance with the two-month time limit

Pursuant to R 136(1), first sentence, the request shall be filed within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit.

In its decision in T 315/90 [6] (recently affirmed by T 1465/08 [2.1]), the board held that the date of the removal was the date at which the appellants should have discovered the committed error if they had taken all due care, due care being a permanent obligation. In that case, the date of removal was not necessarily the date of receipt of the communication notifying a loss of rights. More generally, holding that due care was an obligation extending over the whole of the proceedings, the case law of the boards of appeal recognises that the cause of non-compliance may be removed already at the point in time when a representative taking all due care would have become aware that the time limit had been missed, even though in reality he or she had become aware thereof at a later stage only (cf. T 1561/05 [2.1.3] and the cases cited there).

In the present case, the appellant’s representative, Mr K., was unable to observe the deadline for filing the statement of grounds of appeal, which expired on 16 March 2009. As set out above, non-compliance with that period was the consequence of the fact that his assistant, Ms P., inadvertently put the statement of grounds into the DPMA outbox, which, as evidenced by the indications on that statement, ultimately led to its being delivered at the DPMA on 13 March 2009 and at the EPO on 23 March 2009. According to the credible statement by Ms P., the error was discovered in the appellant’s patent law firm on 15 April 2009, when the acknowledgment of receipt returned by the EPO was received. That date of receipt is also evidenced by the “Received” stamp of the law firm on that document. The question arises whether 15 April 2009 is also the date when the cause for non-compliance with the time limit for filing the statement of grounds was removed or whether the representative or Ms P. should have become aware of the error earlier on.

The representative submitted that, where an acknowledgment of receipt could not be stamped by the EPO’s filing office because it was delivered after office hours, such acknowledgment would usually be returned by post in the following days. In the present case however it was more than one month after delivery of the statement of grounds intended for the EPO that the acknowledgment was received by the patent law firm. The question therefore is whether, under the principle of due care, the representative was under an affirmative duty to inquire with the EPO whether they had received the statement of grounds, as no acknowledgment had yet been received, or to check receipt in the EPO’s online register, and within which maximum time frame such an inquiry or check would have had to be made. Should it have had to be made within a matter of days from 13 March 2009 (the date when the statement of grounds was dispatched) and in any case in less than 12 days from that date, i.e. before 25 March 2009, then the appellant, in filing the request for re-establishment on 25 May 2009, would not have respected the two-month time limit.

In the board’s view it was not necessary for the representative to make an inquiry about the whereabouts of the statement of grounds with the EPO, nor even to check in the EPO’s online register whether it had been added to their electronic file. The board considers that the due care requirement, if it applies in the context of compliance with the time limit of two months of the removal of the cause of non-compliance following the case law cited above (in the second paragraph of the present section 4.1), does not include an obligation to seek confirmation by the EPO in whatever way of the receipt of documents directed to them. An acknowledgment of receipt enclosed with the documents sent and returned with a confirmation by the EPO makes it easier for the sender to prove the filing of those documents with the EPO should a document go astray. An acknowledgment of receipt stamped by the EPO is however not the only way to prove receipt. Evidence to that effect can be furnished by any appropriate means; see, for instance, the decisions of the boards of appeal cited in the EPO publication “Case Law of the Boards of Appeal of the EPO”, 5th ed. 2006 at VI.K.4.3.6.

Therefore taking all due care does not require a party to attach to documents intended for the EPO an acknowledgment of receipt for return by the EPO nor to make an online inspection of the file. As a consequence, any failure to monitor timely return of an acknowledgment or check the contents of the electronic file in the EPO’s register cannot amount to a failure to take all due care either.

Thus, in the case before the board, the representative was under no duty to take such steps. As there is no suggestion from the documents on file that the appellant or anyone in its patent law firm could have become aware of the error before receipt of the acknowledgment on 15 April 2009, the cause of non-compliance with the time limit was removed on that date.

Consequently the period of two months from the removal of that cause was complied with by the request for re-establishment of rights received on 25 May 2009.

This request was also filed within one year of expiry of the unobserved appeal time limit of 16 March 2009.

[4.2] […] The request for re-establishment is consequently admissible.

The request was also found allowable and was, therefore, granted.

To read the whole decision, click here.