Friday, 1 July 2011

T 1289/10 – Quarantine Horrors

After its application had been refused by the Examining Division, in a decision posted on December 8, 2009, the representative of the (American) applicant filed a notice of appeal, together with a request for re-establishment, on March 22, 2010.

The applicant argued that the time limit for filing an appeal was missed in spite of all due care having been taken: The applicant’s US attorney and its European representative were well aware of the time limit ending on 18 February 2010. Several emails were exchanged and finally the European representative was instructed to file an appeal. A corresponding email was sent on 17 February 2010 at 20:01 hours Central European Time (CET). It was classified as a potential threat and stored in the quarantine area of the representative’s email server and found there on February 19, 2010 after the US attorney had sent a reminder concerning the appeal on February 18, 2010 at 17:43 hours CET. Unfortunately, at that time the European representative and his team had already had left the office.

During oral proceedings before the Board, the applicant’s European representative explained how mail was normally processed in his office. There was a central post room where all incoming mail was checked. On 18 February 2010, two people were in charge as usual. Email was printed on blue paper, date-stamped and put into the paper file. Additionally it was forwarded to the responsible person in an electronic format. The staff in question were well aware of the quarantine area of the email system and the issues arising therefrom. They had access to this quarantine area. The staff concerned were not in a position to recall why they did not check that area on that day. Documents dating from February or before indicating any specific office policy concerning regular checks of the quarantine area of the email system could not be provided.

The Board found the request for re-establishment not to be allowable:

[3] The request is not allowable. At least the European representative could not establish that all due care had been exercised in handling the case.

All due care - general remarks

[3.1] Both the applicant and its representatives have to take all due care required by the circumstances (see J 5/80 [headnote I]). All due care required by the circumstances means appropriate conduct by the appellant and its representatives. In this respect it has to be assessed how a competent party or representative would reasonably have acted. As a general rule, a representative acting reasonably would at least take account of known problems and apply known solutions to avoid them.

Due care on the part of the European representative

[3.2] It is clearly a well-known problem that email filters do not always work reliably. That was not disputed by the appellant. More specifically it is common ground that legitimate mail from time to time is wrongly marked as a possible threat and processed accordingly. In the statement of grounds concerning the request for re-establishment of rights the European representative did not address this issue. As a result it seemed initially that he was not aware of this generally known problem. However in his oral submissions he stated that the staff concerned were well aware of these problems. To remedy them the staff were provided with access to the quarantine area and the instruction to check these filters. It can be left open whether these statements might constitute an inadmissible new case that goes beyond the reasons provided during the time limit for filing grounds in support of the request for re-establishment of rights (see J 5/94 [headnote III]). In any case they are not sufficient to convince the Board that all due care was exercised by the European representative when providing an email account for the receipt of urgent and important mail. Staff in the mail department should have been instructed about the fact that an urgent email might arrive at any time and could wrongly be classified as a potential threat by the email system. It appears in this case that an instruction to perform a daily check might have been sufficient. By applying this simple measure the wrongly marked email would probably have been detected in time. The Board wishes to clarify that if a European representative provides a contact email address for all kinds of mail, including mail that may require immediate action by the representative, it is essential to perform a mail check at least at the end of each business day. Given the known problem that legitimate mail from time to time is wrongly marked as a possible threat it is evident that this check must include the quarantine area of the email system.

Due care on the part of the American representative and the appellant

[3.3] The reasons for missing the time-limit for filing an appeal are at least threefold: There was a lack of appropriate organisation of the handling of mail stored in the quarantine area in the office of the European representative […]. The email instruction by the American representative was sent very late, whether because he was instructed by the appellant at such a late stage or for other reasons. Also the email reminder by the American representative - apparently the only attempt to confirm whether the first mail was actually received by the European representative - was sent very late, in fact after European office hours.

As the appellant cannot even establish that all due care was taken on the part of the European representative it can be left open whether the American attorney, at such a late stage, was well-advised to use email at all to instruct the European representative to file an appeal. However if it is to be used, the potential dangers must clearly be borne in mind. Email was never meant to be an instant messaging medium and indeed email may, under normal circumstances, be delayed for several hours or even days or occasionally even get lost. Given these (well-known) facts, it would appear necessary for the sender of an urgent and important email to check whether it has actually been received in time, possibly by using a different means of communication, such as the telephone. […]

The request for re-establishment of rights concerning the right to file an appeal is rejected.

The appeal is dismissed as inadmissible.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Anonymous said...

Having spent a significant part of my existence on the opposite side, I very much appreciate the candour of the assessment made by the representative on the second page:

... we must caution you that we feel the decision from the E.D. was fair, and feel it remiss of us not to bring this up. The prior art for this case is extremely pertinent, and we have grave concerns that bringing out any inventive feature would prove difficult, or at best leave the Applicant with such a narrow scope of protection, that this would be perhaps commercially useless.

I'm purring with pleasure, even though it wasn't one of my cases.

The representative adds:

We would also caution that the BoA are typically much harder to convince of an inventive step, as they are more inclined to combine documents without using the rigid "PSA" followed by the E.D.

I wouldn't be so categorical about the BoA, from my own experience appeal outcomes go both ways; both positive and negative decisions of mine (or "ours", I should write collegially) have been reversed -- but many more were upheld. It would IMO much to do with the differences in chemistry between members of a board and of a division. The more formalistic, approach of the appeal procedure is also a factor. Search and examination sometimes resemble triage, I must admit.

As to the conclusion :

If the applicant wishes to pursue an appeal, we would strongly recomment that significant claim amendment is undertaken, and that clear features which distinguish over the art are included in the claims.

I can only second that, and at every stage of the procedure. If it were only that easy...

The fees quotation is also interesting in that it shows that patent office fees are almost peanuts in comparison to preparing and prosecuting an application, relatively speaking.

I would have been much blunter in the E-mail in outlining the consequences of missing the 10 days+2 months deadline.

The corresponding US case, which can be brought up in PAIR under the publication number 20060260952, was the object of a final rejection, and the applicant did not pursue the matter any further. (I did not compare yet the grounds of the respective patent office decisions).

Myshkin said...

"The fees quotation is also interesting in that it shows that patent office fees are almost peanuts in comparison to preparing and prosecuting an application, relatively speaking."

And those are peanuts compared to what some big companies are willing to spend, e.g. on the Nortel patents.

MaxDrei said...

Of course the case is also interesting on that dilemma, what due date to give the client. I mean, should it be start or the end of the ten day Rule 126(2) period? This particular firm of EPO representatives chose the end date. I suspect its choice owed something to T_0264/88.

Myshkin said...

I know I'm just being a little pedantic now, but since the ten day period of Rule 126(2) comes before and not after the two month appeal period, a deadline given to the client that is two months after the date of the refusal is not the start of the ten day period.

However, I guess that not mentioning the ten day period to the client may help to convince the client that he should really stick to the deadline he was given :-)

Anonymous said...

I guess too, Myshkin and, on your pedant's point, yes of course you are right.

As far as I can make out, if your pocket is deep enough in the USA, you can always buy more time. Thus, US patent attorneys typically have difficulty grasping that some due dates at the EPO are indeed inextensible, no matter how deep your pocket.

This simple difference of understanding needs to be grasped by EPO attorneys who find themselves writing to the USA. Europeans typically advise in their letters to America that you can file an appeal up to date X. It might be more effective to write more forcefully that, after date X, you can't file an appeal (however many lawyer hours you pay for). The vital message to get across to an American is that the due date really is one of those so-called DROP DEAD dates. Otherwise they will assume that an extension of time can always be contrived, somehow or other.