T 1962/08 – Cross With The Cross-Check

The present decision deals with a request for re-establishment. The applicant had missed the time limit for filing an appeal against the decision of the Examining Division (ED) to refuse the application under consideration. There had been an internal mistake when the time limit for filing an appeal had been recorded. As a consequence, the appeal was not filed. The representative had noted this mistake when he was alerted that the time limit for filing the statement of grounds of appeal was expiring soon.

The representative questioned the requirement of an independent cross-check. The case law suggested such a cross-check but did not make it mandatory, or, at least, it created the impression that it was not mandatory. He pointed out that the fact that his firm’s system had worked satisfactorily over decades showed that is was normally effective. There had been no incentive to consider potential sources of mistakes. There was no reason to have more stringent requirements for due care in monitoring time limits because one single error in the subsequent steps could also lead to a loss of rights. He also contested the distinction made between small and large firms because both required a system in writing. Moreover, the German Bundesgerichtshof (BGH) did not require a redundant cross-check …

The representative also requested the following questions to be referred to the Enlarged Board (EBA): 

1. Does the practice of requiring large firms/companies to have an independent cross-check and not to require this from a small firm/company by referring to the close personal collaboration of the persons involved constitute a case of disproportionate discrimination?

2. Is the principle of proportionality safeguarded when an independent cross-check is required although other legal systems explicitly do not require it (*) and although mistakes in domains different from monitoring of time limits can lead to a loss of rights?

3. Is an independent cross-check – at least for large firms/companies – a mandatory requirement or merely a recommendation for proving all due care?

(*) This is a reference to a judgment of the German Bundesgerichtshof (BGH) of June 29, 2000, which explicitly denied the need for a cross-check.

In the following you will find the part of the decision dealing with the allowability of the request for re-establishment. It is rather lengthy, so if you just want a short summary, here is the headnote provided by the Board:

“In general it is part of the requirements of due care concerning a system for monitoring time limits that the monitoring of time limits is not entrusted to one single person but that there is a general cross-checking mechanism incorporated into the chosen system for monitoring time limits, which mechanism is independent of the person responsible for the monitoring of time limits (confirmation of T 428/98). This cross-checking mechanism can be provided within one single system for monitoring time limits. If the cross-checking mechanism is implemented by means of a second system for monitoring time limits, the latter has to be independent of the first system (complement to T 1465/07).”

For the sake of brevity, I have used the following abbreviations.

ADuCaRC : all due care required by the circumstances

MoTiL : monitoring time limits

MoTiL system is short for “system for monitoring time limits”

PeRMoTiL : person responsible for monitoring time limits

*** Translated from the German ***

Due care taken by the applicant and its representative

[5.1] The request is allowable if the applicant, in spite of all due care having been taken, was unable to observe the time limit for filing an appeal. According to the general rules concerning the onus of proof the applicant bears the burden of proof. The request for re-establishment of an applicant with a professional representative acting on his behalf is only allowable if both the applicant himself and his representative have met the necessary standard of care (J 1/07 [4.1]) because a failure of its representative is imputed to the applicant. Thus, when an applicant is represented by a professional representative, a request for re-establishment cannot be acceded to unless the representative himself can show that he has taken the due care required of an applicant by A 122(1). (see J 5/80 [headnote 1]).

Taking of all due care by the representative

General statements on due care

[5.2.1] The following statements are extracted from the Case Law Book (Fifth edition).

[…] In numerous decisions the boards have ruled on the “all due care required by the circumstances” (ADuCaRC) issue. In considering it, the circumstances of each case must be looked at as a whole […] The obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. […] For cases where the cause of non-compliance with a time limit involves some error in the carrying out of the party’s intention to comply with the time limit, the case law has established the criterion that due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system […]

6.2.2 Isolated mistake within a satisfactory MoTiL system

(a) General principles

An isolated mistake in a normally satisfactory system is excusable (see for example T 1024/02, T 165/04 and T 221/04); the appellant or his representative must plausibly show that a normally effective MoTiL system prescribed by the EPC was established at the relevant time in the office in question (J 2/86, J 3/86 […] and J 23/92). The fact that this system operated efficiently for many years was evidence that it was normally satisfactory (see T 30/90, J 31/90, J 32/90, T 309/88). […]

(b) Small firms/companies

[…]

(c) Large firms/companies

In J 9/86 the board was of the opinion that in a large firm where a large number of dates had to be monitored at any given time, it was normally to be expected that at least one effective cross-check was built into the system […].

The relevant content of the “Case Law” publication

[5.2.2] The applicant’s representative pointed out that the publication “Case Law” (in its German version) indicated that the existence of an independent cross-check was not a mandatory requirement. This submission was based on sub-paragraph VI.E.7.3.3.c) of the 6th edition of the “Case Law” book as far as it is identical to the 5th edition (see sub-paragraph VI.E.6.2.2.c)). The use of the expression “effective” (effizient) in the context of the requirement of a “normally effective MoTiL system” in sub-paragraph VI.E.7.3.3.a) of the 6th edition, which, as far as this point is concerned, is identical to VI.E.6.2.2.a) of the 5th edition of the “Case Law” book, also spoke in favour of there being no mandatory requirement. He pointed out that he had the right to rely on the content of those extracts of the “Case Law” book (which have been partly reproduced in the preceding paragraph), even without reading the decisions cited therein.

It should be noted here that the private practice of the representative is a large firm within the meaning of the extract of the “Case Law” book cited above: the letterhead mentions seven patent attorneys and three attorneys-at-law for the Munich office alone, and the representative has mentioned that the firm has to deal with between 5000 and 10000 time limits every year. During the OPs, the representative has not disputed that the firm was indeed a large firm within the above meaning […].

Decisions of the Board concerning large firms are summarized under the same heading of the 5th edition of the “Case Law” book, in the above mentioned paragraph VI.E.6.2.2.c), together with decisions concerning large companies […]. Thus, whoever wished to rely on this book alone, would have to expect that large companies and large firms would be treated in the same way. When reading the book, he/she would find, among other things, that the second section of part VI.E.6.2.2.c) mentions, in its discussion of the decision in case T 828/94, that a monitoring system “should contain an independent cross-check” (emphasis by the Board) and could understand this to mean that such a cross-check does not mandatorily have to be implemented but rather is optional. Moreover, the preceding, above cited first paragraph of this section states:

“In J 9/86 the board was of the opinion that in a large firm where a large number of dates had to be monitored at any given time, it was normally to be expected that at least one effective cross-check was built into the system …” (emphasis by the Board)

This extract, in particular the expression “it was normally to be expected” also could allow the deduction that an independent cross-check was not always necessary. However, it is also stated, in view of the findings of another Board in case T 686/97 […]:

“The provision of a “redundant” or “failsafe system” is an essential component of a normally satisfactory reminder system in corporate departments.”

In any case, this passage unambiguously requires an independent, second cross-check system. If one was to approve the representative and understand this to be in contradiction with the text of T 828/94 reproduced in the “Case Law” book and, moreover, to J 9/86, and if one was also to assume, as does the representative, that it was possible to rely on the “Case Law” book alone, then the question would arrive as to how the representative would have to deal with such a contradiction in the context of the requirement of “taking ADuCaRC” under A 122(1).

The Board is of the opinion that when a professional representative comes to the conclusion that, when dealing with the same question, some decisions of the Boards of appeal have formulated more severe requirements than others, he/she would follow the decision that formulated the most severe requirements, unless it was clear that this decision was an exception. Only this understanding complies with the wording of the provision that requires that ADuCaRC is to be taken. In the present case, this would have meant that the representative would have had to apply T 686/97, wherein, according to the “Case Law” book, a “redundant” or “failsafe” cross-check system is mandatorily required.

The reference, in section VI.E.6.2.2.a) of the 5th edition, that a “normally effective” MoTiL system was sufficient does not change this finding. This already follows from the fact that this section is entitled “General principles” and that the following sub-paragraph c) provides a more specific sub-paragraph for large firms and companies, and, therefore, prevails. Should the representative assume that the two sections were of the same importance, he/she would have to see a contradiction and stick to the more severe requirements.

Therefore, the representative’s submission that in view of the above mentioned part of the “Case Law” book, there was no mandatory requirement for a cross-check is unsuccessful.

[5.2.3] This notwithstanding, a professional representative cannot rely on the “Case Law” book alone. A careful professional representative can be expected to get familiar with the decisions that are relevant for the factual situation under consideration and does not inform him/herself exclusively by means of a collection of extracts or summaries of selected decisions established by somebody else.

This also holds true for the “Case Law” book, the 5th edition of which mentions the editor to be the “Legal Research Service for the Boards of Appeal, DG3, EPO”. The foreword to this edition is of particular interest. Its author, the chairman of the EBA and vice-president of DG3, makes the following statements (emphasis by the Board):

“The book follows the same general pattern as in the previous editions: dividing the case law into topics and illustrating each by short summaries of selected decisions. … The purpose of this book is to help users of the European Patent system identify the decisions they need. No summary, however careful, can replace study of the actual decision. All the decisions handed down since 1980 are available free of charge on the EPO’s Internet site (www.european-patent-office.org). They can be accessed via the reference number or via search terms. They are also available on the Espace Legal CD-ROM (or DVD), which is published twice a year. … This latest report on the case law of the EPO boards of appeal will provide information for everyone concerned with European patent law and should be read in conjunction with the annual “Board of Appeal Case Law” Special Editions to the EPO Official Journal.”

It should be noted that the aim of the book is to help finding relevant decisions but not no replace the study of the actual decision. It is also important to note that all decisions handed down since 1980 are available free of charge on the Internet.

By the way, the foreword also is in line with T 494/95, where the Board has refused the appellant’s argument of “good faith” based on a misleading statement in the “Case Law” book in its 1996 edition, in particular for the following reason:

“Moreover, this book is only a summary of decisions and not a text of law. Such summaries cannot replace the study of the decisions but can only provide references to decisions that might be relevant. The reader may be expected to read the individual decisions cited in the book if he/she wishes to base his/her arguments on these decisions” (emphasis by the Board)

Were it only for the above mentioned explicitly declared intention of the “Case Law” book, it is impossible to construe a responsibility of the Office for incomplete, misleading or erroneous statements in the book, in application of the principle of good faith (see “Case Law”, 6.A.VI.A.1). Quite to the contrary, the book explicitly did not establish a relationship of good faith (Vertrauenstatbestand) from which it could be derived that the summaries of decisions provided therein could replace the study of the decisions under consideration.

Having said all this, it is necessary to consider all the relevant decisions that have been made available by the Office before the expiration of the time limit. The submissions of the representative are examined on the basis of those decisions.

[5.2.4] The practice of the Boards of appeal

a) Content of the decisions of the Boards of appeal

The representative points out that, according to the case law of the Boards of appeal, an independent cross-check is not mandatory. Moreover, it was not clear what such a cross-check was meant to comprise.

As far as [the Board] can see, a system with an effective “cross-check” was mentioned for the first time in decision J 9/86 [9] […]:

“in a large firm where a large number of dates have to be monitored at any given time, it is normally to be expected that at least one effective cross-check is built into the system.”

According to the (third) headnote of T 428/98 […]

“generally speaking, to satisfy the requirement of all due care, a MoTiL system must not leave MoTiL in the hands of just one person, but must incorporate at least one effective cross-check.”

In any case, the extract from this decision that is given below shows that the cross-checking mechanism has to be independent of the PerMoTiL, even if one were inclined not to see this requirement in the wording of the headnote […]. The Board is of the opinion that it is indispensable (unumgänglich) that a representative having doubts concerning the content of a headnote also reads the reasons for the decision, in particular if, as is the case here, the relevant section is explicitly referred to in the headnote. In any case, as a rule, only the reasons for the decisions contain the relevant justification of a decision.

The relevant passage of the decision reads:

“[3.5] However, case law rules that in such a case it must also be demonstrated that the law office operated a normally efficient MoTiL system (see case law references in: Case Law, loc. cit.) which had failed only for very specific reasons. Under case law, one of the requirements of care applicable to a MoTiL system is generally that monitoring should not be left in the hands of just one person; the chosen monitoring system should incorporate at least one effective cross-check (Case Law, VI-E, 9.2.3; see for example T 828/94 [2 et seq.], with other case law references). …

In very special circumstances, the boards of appeal have been prepared to consider a representative to have exercised all due care even though there was no all-purpose cross-cross-checking mechanism independent of the PerMoTiL; but that was only in cases where the representative’s office was a small unit in which he essentially bore sole responsibility for substantive processing of the files and the demand for MoTiL was accordingly limited, and where MoTiL also involved intensive personal co-operation between the representative and his assistant (see for example J 31/90 [4 et seq.], and T 166/87 [2]). The exceptional nature of this ruling has been stressed …”

However, the Board admits that – in contrast to the case J 31/90, which has been cited as an exception in this passage – decision T 166/87 has considered that in a patent department with seven full time employees a cross-check was not indispensable, whereas the Board, in the very same decision [T 428/98], found that a private practice with six full time employees dealing with proceedings concerning industrial property rights found that “the present situation is not comparable” (see [3.5, last paragraph]). As a consequence, the Board reaffirmed the fundamental requirement of a cross-check mechanism independent of the PerMoTiL.

Moreover, there has been a series of decisions wherein re-establishment was granted in cases where time limits had been recorded in a deficient way or not been recorded at all, without there having been a cross-check, and wherein the Board had neither explicitly referred to the size of the private practice, nor mentioned that its conclusion was exceptional (see T 309/88 [2.6], T 1/99 [11] as well as T 567/92 [3] and T 374/95.

For the sake of completeness, the decision in case T 869/90, which had been insisted upon by the representative, should also be mentioned. In this case there had not been any cross-check during the last ten days before the expiry of the main time limit, but the representative alone was responsible for MoTiL. Nevertheless, his mistake was excused by the Board. However, the Board had considered the principle of proportionality when examining whether ADuCaRC had been taken. When examining the required due care, the Board considered that in cases where possibly all due care had not been taken, the “circumstances” comprised the fact that the consequence of such a lack of due care was that the time limit was missed by one day only. The [present] Board (although in different composition) has already rejected this approach in decision T 1465/07 [16], for reasons that are explained in detail in this decision, and it maintains this rejection also in its present composition.

The questions of whether and to which extent the last mentioned decisions are irreconcilable with T 428/98 and whether T 428/98 indeed corresponds to a “confirmation of the previous case law”, as has been stated at the end of headnote 3, may be left open.

As a matter of fact, on the one hand – as explained above – decisions J 9/86, T 828/94 and T 686/97 (to which one should add T 36/97 [16]) have required a cross-check before T 428/98 was issued. That the word “soll” (should) in the German summary in the “Case Law” book of the decision in case T 828/94 is to be understood as “muss” (has to) follows from the English original and from point [2] of the reasons for the decision.

On the other hand, the Board has not found any decision issued after the posting of decision T 428/98, wherein a cross-check has not been required. However, such a cross-check has been required in the following decisions: T 1172/00 [3.2] T 622/01 [2.3], T 1561/05 [2.2.1], T 257/07 [2.2], J 13/07 [5.2.1.3], T 1726/08 [13] and, very recently, in T 529/09 [11]. In order to reach the conclusion that ADuCaRC had been taken, [the Boards] required that two persons, who were independent of each other, were responsible for MoTiL (or, as in T 257/07, that an automatic system was used instead of the second person), but keeping a second deadline calendar was not considered to be mandatory.

In decisions T 902/05 [6], T 261/07 [2.7] and T 1465/07 [19] [the Boards] explicitly required the existence of a “redundant, failsafe” system, as in the previous decision T 686/97 [8] cited above, each time referring to this decision. However, in those decisions, the appeals have been dismissed because the cross-check was not independent, and not because there were not two monitoring systems. Among other things, it was criticized that both systems were checked by one and the same person. The situation in J 9/86 [9] and J 1/07 [4.8, referring to J 9/86] was similar, although a “redundant, failsafe” system was not explicitly mentioned. In case T 785/01 [4.4], however, [the Board] found that there was a “redundant” system with an independent cross-check and re-establishment was granted.

Therefore, the Board holds that at least since the beginning of the present decade, the case law has established that a cross-check is (1) required and (2) the two checks have to be independent of each other. Independence can be ensured by providing a system wherein the acts of one person are supervised by another person or [by providing] two systems each of which is checked by a different person.

The Board has no doubts that a MoTiL system (or two systems, as the case may be) can be run electronically. Whenever a cross-check comprising one (or two) such system was considered insufficient, this was – as far as is apparent – not due to the electronic nature of the system, but to a lack of independence (see T 902/05 [6]), a lack of suitability of the concrete system (as in T 1726/08 [19]) or a lack of plausibility check of the time limit generated by a computer by the representative (T 473/07 [3.4]).

As explained above, when discussing the question of whether an independent cross-check was required, the representative also referred to the first paragraph of section VI.E.6.2.2.a) of the 5th edition of the “Case Law” book (the content of which is also found in section VI.E.7.3.3.a) of the 6th edition in identical form), according to which the case law of the Boards of appeal did not require a cross-check but only a normally efficient MoTiL system. The Boards had considered that the fact that a system had efficiently functioned over years was proof for it being normally reliable. This requirement was fulfilled for the system used in [his] firm. As far as the PerMoTiL in his firm, Ms. J., was concerned, during the ten years of her oversight there had not been a single case - before the time limit under consideration had been missed - wherein an error on her behalf had required re-establishment.

The Board first points out that the decisions referred to in the above mentioned first paragraph of said section, in the context of MoTiL systems, all bear file references (Aktenzeichen) from years between 1986 and 1992 (decisions T 1024/02, T 165/04 and T 221/04 do not refer to errors in MoTiL). Concerning the general principles mentioned in this paragraph, the Board repeats what it had stated in T 1465/07 [19] (in different composition) (confirmed in T 1726/08 [25]): Evidence that such a monitoring system operated efficiently for many years will weigh in favour of a finding of a normally satisfactory character but will be counterbalanced by evidence that main features of such a character, such as an independent cross check, go missing. In that case a satisfactory character will be excluded. The “Case Law” book has been completed accordingly in its 6th edition (see VI.E.7.3.3.a)). The Board is of the opinion that the this conclusion necessarily follows from the case law on cross-checks mentioned above, issued since T 428/98 and the previously mentioned decisions having file references between 1986 and 1992 are obsolete – as far as they contradict this conclusion. In T 428/98 the request for re-establishment was dismissed although it had been pointed out that “the clerk had worked in the appellant’s representatives’ law office for 33 years, was an extremely reliable specialist and had never missed a time limit before”. […] In J 13/07 the appellant was unsuccessful when submitting that there was no need for an independent check of whether the clerk in charge of the payment of renewal fees in the patent department had fulfilled her duties, inter alia, because the internal proceedings had always worked. [Even] a single oversight in a well working system could be excused (only) if the appellant or its representative could present a credible case that at the moment in time under consideration its office had a normally efficient system for monitoring time limits under the EPC and that auxiliary personnel used to carry out routine work had been carefully selected and supervised in regular intervals by means of an independent cross-checking mechanism (see [5.2.1.3])

Incidentally, based on the above analysis of the case law of the Boards the present Board is of the opinion that the word “effizient” in the expression “in der Regel effizientes System” (“normally efficient system”) was used by the Boards, not in order to express an optimal relationship between the goal to be reached and the means to be used – as the representative believes – but in the meaning of “effizient” (“efficient”), i.e. expressing that the goal has effectively (wirksam) been reached. This is why the English version of the “Case Law” publication refers to “a normally effective MoTiL system” (emphasis by the Board) (see 5th edition, VI.E.6.2.2.a)), an expression used in the decision J 23/92 [3], issued in English, cited therein (see also T 836/09 [5.2, second paragraph], which also refers to “a normally effective MoTiL system”). This being said, the following sentence of the cited passage of the “Case Law” publication begins with the words: “The fact that this system operated efficiently for many years …” (emphasis by the Board).

Moreover, there was no reason for the Boards to decide on which way of MoTiL represents the optimal balance between reaching the goal and use of means in a private practice or a company, i.e. which way is “efficient”. This question has to be answered by the persons that are in charge in those structures. The only point that has to be checked in this context is whether the access to the courts is not rendered difficult in a way that is out of proportion. (see below, under b) ii)).

To sum up, this means that the general requirement of due care, in the context of MoTiL systems, comprises the requirement that the monitoring is not entrusted to one single person but that a general cross-checking mechanism that is independent of the PerMoTiL is incorporated into the chosen MoTiL system. This cross-checking mechanism can be provided within one single MoTiL system. If a second MoTiL system is provided to act as a cross-checking mechanism, it has to be independent (sometimes referred to as “redundant”) of the first system.

Therefore, the complaint of the representative, according to which the case law did not require a cross-check and it was not clear what it had to comprise, is not correct. However, the Board has to admit that a certain amount of research and analysis of the case law of the Boards is required to come to this conclusion. This being said, it is part of the duties of a careful representative to make this effort.

b) Compliance of the case law with the general principles of equal treatment and proportionality

Now that it has been established that the case law, in any case since T 428/98, clearly requires that there be an independent cross-check within the meaning exposed above, it has to be checked whether such a requirement is legitimate. The representative complains that it constitutes an inadmissible discrimination (Ungleichbehandlung). […]

i) Discrimination

The general principle of equal treatment (Gleichheitssatz) has been introduced into Article 20 of the Charter of fundamental rights of the European Union, which states 

“Everyone is equal before the law.” The principle of equal treatment requires that “similar situations should not be treated differently and that different situations should not be treated identically unless such differentiation is objectively justified” (ECJ, 217/91, 1993, I-3923, paragraph 37). 

The Board presumes for the time being that those principles also apply in the Contracting states of the EPC. It is of the opinion that when the principle of equal treatment is applied, a particular interpretation of provisions of the EPC within the framework of common interpretation must not lead to distinctions which the EPC lawmaker is not allowed to make. Such an application of a provision of the EPC by a Board would violate the principle of equal treatment.

- Monitoring of time limits and subsequent activities

The representative complains that there was no justification for distinguishing the MoTiL from subsequent steps, such as putting documents in envelopes or sending them by fax. There was the same potential for errors in both domains.

The decision in case rule of equality, rejected by the representative, concerned the erroneous insertion of a statement of grounds of appeal that was to be sent to the EPO in the firm’s mail box for mail to be sent to the German Patent and Trademark Office. In this case the Board has made a difference between MoTiL and the treatment of mail to be posted and has explained why, as a rule, there was no need for a cross-check in the latter case (see T 836/09 [5.2, third paragraph]). It justified this distinction by referring to T 178/07 [1.1.3] and stated that, in contrast to MoTiL, the risk of making errors was small in the treatment of mail to be posted because this treatment, as a rule, comprised the execution of simple steps.

The present Board is also of the opinion that MoTiL requires more intellectual effort than putting documents into envelopes, putting the envelopes into the corresponding internal mail box or sending the documents by fax. There may only be oversights in those latter activities, whereas the recording of erroneous time limits may also be due to miscalculations or ignorance of legal provisions to be applied in the calculation of time limits. The greater intellectual effort entails a higher risk of making mistakes. Therefore, the Board is of the opinion that the situations are not comparable and there is an objective justification for a different treatment by the case law.

- Large/small firm

The representative also complains that the distinction between small and large firms was not understandable as far as the duty of due care was concerned, because an attorney working alone could not rely on his memory or the memory of his only secretary or assistant (Patentanwaltsfachangestellte) but needed a functioning, MoTiL system in writing, as did a large firm.

Concerning this matter, it has to be pointed out that the apparently first decision based on the requirement of a cross-check – i.e. J 9/86 – this requirement was formulated for a large firm, in which a considerable number of dates has to be monitored at all times. In contrast to this (demgegenüber) T 428/98 – as explained in detail – has pointed out that, as a rule, a cross-check was required, which had been abandoned by the Boards only in the exceptional case of small units, i.e. the Board presumed a rule/exception relationship (Regel-/Ausnahme-Verhältnis). As far as [the Board] can see, this relationship has not been questioned in the subsequent case law.

The Board is of the opinion that the fact that a small unit, such as a one-man-firm, consisting of one representative and his secretary, has to monitor a relatively small number of time limits, is not the only circumstance justifying an objective distinction. In addition to this, the monitoring is also less complex than in a large firm where the greater number of representatives alone makes the monitoring more complex.

- Result

Having considered all this, there is no discrimination, neither in view of the treatment of MoTiL as compared to subsequent activities, nor in view of the treatment of large and small firms. Therefore, it is not necessary to dwell in more detail on the cause of validity (Geltungsgrund) of the general principle of equal treatment.

ii) Proportionality

The Board (in different composition) has made extensive statements on the question of proportionality of the requirement of due care established in the case law, which consists in the requirement to incorporate a general control mechanism that is independent of the PerMoTiL into the chosen MoTiL system, in T 1465/07. It maintains those findings in its present composition.

The relevant part is reproduced in the 6th edition of the “Case Law” (under VI.E.11.):

“In T 1465/07 the board interpreted A 122 EPC 1973 in the context of the right of access to a court taking into account the case law of the European Court of Human Rights and the European Court of Justice and came to the following conclusions:

The principle of proportionality applies to limitations of the right of access to the boards of appeal, such as rules on time limits, by legislative measures or their application. This means that those measures or their application must not exceed the limits of what is appropriate and necessary in order to attain the objectives legitimately pursued by the legislation in question; when there is a choice among several appropriate measures or ways of applying them recourse must be had to the least onerous, and the disadvantages caused must not be disproportionate to the aims pursued.

As for the application of A 108 EPC 1973 in conjunction with A 122 EPC 1973, the principle of proportionality has the consequence that the interpretation of those provisions must not impose means that are inappropriate, unnecessary or disproportionate in relation to the aim to be achieved, namely legal certainty and the proper administration of justice by avoiding any discrimination or arbitrary treatment. Correspondingly, the conditions for granting re-establishment, in particular the requirement of due care, must not be interpreted in an excessive manner that unreasonably restricts access to the board and thus prevents the board from deciding on the merits of the case. This is the balance between legal certainty and proper administration of justice on one hand and substantive justice on the other, which has been struck under the EPC in this context. It follows that the principle of proportionality must always be applied in connection with the interpretation of those conditions, which determine whether or not an application for re-establishment can be allowed.”

The above mentioned general principles are – as far as [the Board] can see – comparable to the principles of the German Federal Constitutional Court (Bundesverfassungsgericht) mentioned by the representative.

As stated above, it is part of the requirements of due care in view of MoTiL systems in general that the monitoring is not entrusted to one single person but that a general cross-checking mechanism that is independent of the PerMoTiL is incorporated into the chosen MoTiL system. This cross-checking mechanism can be provided within one single MoTiL system. If a second MoTiL system is provided to act as a cross-checking mechanism, it has to be independent (sometimes referred to as “redundant”) of the first.

The Board is of the opinion that the requirement of due care consisting in an independent cross-check within the above meaning is both suitable and necessary for minimizing the risk of losing a patent or – as here – of a patent application. This requirement of due care is not inappropriate (unangemessen). First, according to the case law of the Boards of appeal (as shown above) keeping a second deadline calendar is not mandatory, very much as in the decision of the Bundesgerichtshof cited by the representative. Moreover, one (or more) electronic system can be used for MoTiL. The Board is of the opinion that in the present case an independent cross-check could have consisted in that a person different from Ms. J. checked the entry of the relevant time limits that had been marked by hand on each incoming document on the central deadline calendar that was filled in by Ms J. alone and consulted (nachsehen) the time limits to be kept on each working day. Suitable organisation measurements would have allowed to reduce the negative impact on the work carried out by Ms J. as far as possible (e.g. the deadline calendar could have been accessible at certain hours of the day only), and could have completely avoided by the introduction of an electronic deadline calendar to be filled in by Ms. J., and to which the persons in charge of the cross-check could have had access. The Board is of the opinion that the requirement of due care via a cross-check is compatible with the principle of proportionality both generally and in the present case.

Although it is desirable that the case law of the Boards of appeal and of the national jurisdictions be uniform, the assessment of what due care means is in the sole responsibility of the relevant deciding body. Insofar certain differences cannot always be avoided. In the present case, the Board cannot subscribe to the assessment of the German BGH given above, which may be more generous.

Outcome

[5.2.5] In the case under consideration the monitoring or the time limits was entrusted to one single person, i.e. Ms. J. In the chosen MoTiL system there was no general cross-checking mechanism that is independent of the PerMoTiL, as required in the case law in any case since T 428/98. Contrary to the understanding of the representative, it is not possible to consider that the checking of the time limits marked on incoming documents by himself and his secretary is tantamount to such a cross-checking mechanism because there was no corresponding verification of the entries in the deadline calendar. The fact that the MoTiL system in the representative’s firm worked well over years is irrelevant because the required independent cross-check was missing.

The argument that the MoTiL in this firm was handled as a separate “one-person-department”, which falls under the case law for “small departments”, is off the mark. Whenever the case law made exceptions to the requirement of due care by cross-checks, it concerned – as explained above – small work units, in the case of J 31/90 a firm consisting of a representative and his secretary, in the case of T 166/87 a “relatively small” department of a company. Both cases, therefore, dealt with small work units which not only managed time limits but also did the corresponding work. This obviously does not hold true for the “one-person-department” formed by Ms. J.

It follows that in the representative’s firm the requirements of due care in view of a MoTiL system were not complied with because the required general independent cross-checking mechanism that is independent of the PerMoTiL, Ms. J., was lacking.

Finally, the fact that the notice of appeal had been finished long before the expiration of the time limit, as pointed out by the representative, is irrelevant for answering the question of whether the representative had fulfilled his duty of due care. What counts is only whether the appeal has been filed in due time and in compliance with the formal requirements (cf. T 1465/07 [16, under “The intent to appeal”].

If follows from the above that the representative has not proven that he had taken ADuCaRC under A 122(1).

Due care taken by the applicant itself

[5.3] As the representative has not taken ADuCaRC, the question of whether the applicant itself has taken all due care is not relevant any more. Both the applicant and its representative have to take the required measure of due care.

[5.4] Therefore, the request for re-establishment is not justified and cannot be granted.

Referral to the EBA

[6] According to A 112(1)(a) EPC 1973 […], in order to ensure uniform application of the law, or if an important point of law arises: the Board shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required.

Ensuring uniform application of the law

[6.1.1] The Board has found above that at least since T 428/98 […] the case law is uniform in that it belongs to the requirements of due care concerning MoTiL systems in general that the MoTiL is not entrusted to one single person but that a general cross-checking mechanism that is independent of the PerMoTiL is incorporated into the chosen MoTiL system. The fact that in some decisions a “redundant” fail-proof system was required has not resulted in rejection of requests for lack of two control systems. This was only done on the ground that the cross-check was not independent.

The Board does not see any reason to depart from this practice and has criticized the MoTiL system because there was no independent control mechanism within the MoTiL system in the representative’s firm, and not because there was no second, “redundant” control mechanism.

As far as the decisions issued before T 428/98 are concerned, as far as they are in contradiction with this decision, they have lost their relevance in the course of the evolution of the law. Therefore, it is not possible to derive a divergence of the case law from them (see G 3/08 [7.3.8]).

Important point of law

[6.1.2] The Board was able to take a decision on the questions filed by the representative in view of a referral to the EBA, without there being any doubts.

Moreover, what was missing in the present case was the independence of the cross-check within the MoTiL system based on a deadline calendar. The question of whether a second, “redundant” system is required, which the Boards have answered differently, is not decisive here.

Result

[6.1.3] As there is no divergence of the case law that would be relevant for the practical case, and as the legal question of whether a second, “redundant” control mechanism is mandatory is irrelevant, the Board is of the opinion that a referral to the EBA is not required.

I fear that many firms and companies have internal procedures that would not resist the scrutiny of the Boards. What about yours?

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NB: The official date of this decision is December 12, 2010, i.e. a Sunday. ;-)