Wednesday, 21 November 2012

T 592/11 – Ten Days



As a corrector I often see EQE candidates applying the 10-day-rule in a wrong way. It also happens in real life, as the present case shows.

The story begins with the refusal of an application by a decision of the Examining Division dated October 27, 2010. When calculating the four-month time limit for filing the statement of grounds of appeal, the applicant did not take the 10-day-rule into account and entered February 27 as time limit into the monitoring system (rather than the real time limit, which was October 27 + 10 days = November 6 + 4 months = March 6, 2011 (Sunday) → March 7, 2012). The representative later found out that he could not keep that limit and asked the paralegal to re-calculate the time limit, taking into account the 10-day-rule. The paralegal added the 10 days at the end of the 4 months (October 27 + 4 months = February 27 + 10 days = March 9, 2011). The statement of grounds of appeal was filed by fax on March 9, 2011.

On April 21, the applicant requested re-establishment. According to the applicant, both the paralegal and the representative were well aware of the 10-day-rule but had applied it wrongly.

There were oral proceedings (OPs) before the Board on July 20, 2012.

On July 23, 2012, the applicant made further written submissions.

The Board found the request for re-establishment admissible and then dealt with its allowability:

*** Translation of the German original ***

The persons having to exercise all due care within the meaning of A 122(1)

[5.1] The request is allowable if, in spite of all due care, the applicant was hindered from meeting the time limit for filing the statement of grounds of appeal, the non-observance of which had the direct consequence of losing the legal remedy of appeal. According to the general rules governing burden of proof, it is the applicant that bears the burden of proof for establishing that these conditions are fulfilled. When an applicant is represented by a professional representative, then, according to decision J 5/80 [headnote 1], the 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). In this respect the Board referred to the discussions at the Munich Diplomatic Conference, where such a duty was defined (see point [4] of the reasons and the evidence cited therein). The Conference decided not to introduce an explicit provision into the EPC. That the professional representative has to exercise all due care has been confirmed in the established case law of the Boards of appeal (see, for instance, T 1149/11 [4.2]).

According to the Board in case T 832/99 [7.2] the same strict standards […] were to be applied to an clerk (technischer Sachbearbeiter) working in the private practice of the representative without being himself a professional representative. The clerk was not an auxiliary person that only carried out routine work such as noting time limits for the professional representative. Rather the clerk de facto did the work of a patent attorney.

The present Board considers it to be correct to apply the same strict standards of due care that apply to an applicant, its professional representative or its attorney-at-law at least to a professional representative who is an employee of the applicant, its professional representative or its attorney-at-law, because the employee has the same knowledge  as a professional representative and in practice exercises an activity that is structurally similar. The present situation is of this kind because the patent engineer acting under A 133(3) is a professional representative.
I cannot help but find this paragraph weird. If a person is a professional representative, then his/her employment status simply should not matter. The rules have to be the same for in-house attorneys and professional representatives working in private practice. But perhaps I do not understand what the Board wanted to convey.
Due care exercised by the patent engineer

“General comments on due care”

[5.2.1] In part VI.E.7.3 of the EPO publication “Case Law of the Boards of appeal of the EPO” (6th edition, July 2010, hereinafter referred to as “Case Law”) a sub-item 7.3.1. “Introduction” and inter alia the following passages are found under the above header (the numerous references to appeal cases were omitted):
In numerous decisions the boards have ruled on the “all due care required by the circumstances” 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 …. (emphasis in the original text)
According to the case law, sudden serious illness is an example for exceptional circumstances (cf. the title of point 7.3.2 (b)).

According to the established case law, at least after T 428/98, generally speaking, to satisfy the requirement of all due care, a system for monitoring time limits must not leave the monitoring of time-limit in the hands of just one person, but a general cross-check mechanism has to be incorporated into the chosen system for monitoring time limits, which mechanism is independent of the person responsible for the monitoring of time limits (see also decision T 1962/08).

“Single mistake within an otherwise normally satisfactory monitoring system”

(a)   Duty of due care of the patent engineer as part of the monitoring system

[5.2.2] When schematically applying the above passage “that due care is considered to have been taken if non-compliance with the time limit results … from an isolated mistake within a normally satisfactory monitoring system” and the case law according to which the system has to provide a cross-check mechanism in the above sense, one might be inclined to agree with the appellant and consider that all due care has been taken. In order to do so, one would have to consider that it has been proven that the cross-check mechanism used by the appellant did work well and that the erroneous calculations of time limits by Ms M. and by the patent engineer both qualified as isolated mistakes. Both checks carried out within the framework of the cross-check mechanism had exceptionally failed but as the system was in principle working well, this failure was to be excused – at least if both Ms M. and the patent engineer knew the relevant legal provisions. The patent department of the appellant is not a small unit where the cross-check mechanism may exceptionally be dispensed with (see T 428/98 [3.5]). The patent engineer has submitted during the OPs that the patent department of the appellant comprised more than 50 persons, among which more than 5 patent engineers, and has, therefore, agreed with the opinion of the Board in this respect.

An obiter dictum in case T 1095/06 [15] pleads for a schematic application in the above sense. The Board stated that when there was a cross-check system that was independent of the professional representative concerned, as “recommended” by the case law of the Boards of appeal, and both the professional representative and the independent system failed, the possibility then would exist that the immediate cause for non-observance of the time limit was the unforeseeable failure of the independent system, and not lack of due care by the professional representative, so that re-establishment under A 122 was possible.

However, such a schematic application cannot be allowed because, in the opinion, of the Board, it is not in line with the duty of a professional representative to take all due care when checking time limits. This follows from the following in-depth analysis of the case law.

In J 5/80 the Board distinguished between the due care of a representative and the due care of an auxiliary person, in particular when time limits are to be checked. Headnotes 2 and 3 read (emphasis by the Board):
2. If the representative has entrusted to an assistant the performance of routine tasks such as typing dictated documents, posting letters and parcels and noting time limits the same strict standards of care are not expected of the assistant as are expected of the applicant or his representative.

3. A culpable error on the part of the assistant made in the course of carrying out routine tasks is not to be imputed to the representative if the latter has himself shown that he exercised the necessary due care in dealing with his assistant. In this respect, it is incumbent upon the representative to choose for the work a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision over the work.
Even in above cited decision T 1095/06 [6] the Board refused to extend the case law regarding the due care to be taken by the representative and the auxiliary person to everything that can be described as an “isolated mistake”. A professional representative had to be presumed to be supervising his own work continuously. Thus the case law on “an isolated mistake in an otherwise satisfactory system” [for monitoring time limits] could not be relied on to ignore a failure of the professional representative himself, unless there were special circumstances [which made the failure compatible with taking all due care].

The present Board agrees with the opinion expressed in decision J 5/80 as summarised in the above headlines. In this respect the Board had referred to the Munich Diplomatic Conference of 1973. It was clear from the discussions that had taken place there that the Conference had no wish to rule out the possibility of excusing the negligence of an employee (see [5] and the references cited therein). In the reports on the Munich Diplomatic Conference cited by the Board, there is, however, no discussion of the possibility to excuse the applicant or its representative. The Board is of the opinion that this can only mean that for the participants to the Conference excusing a failure of the representative was out of the question.

In the opinion of the present Board, the statements of the case law regarding cross-check systems where both checks were carried out by auxiliary persons, i.e. without consulting a professional representative, are also based on these strict requirements for the due care to be taken by the representative. Decision T 439/06 [10] (similar: T 1561/05 [2.2.2]; both decisions were confirmed in T 473/07 [3.2]) stated that the representative himself had to once more check the calculation, by the administrative department, of the time limit for filing a statement of grounds of appeal, which, when missed, would have severe legal consequences, i.e. carry out a third check, when the file was handed over to him for processing (zur Bearbeitung). The decision did not mention the possibility of excusing [the representative] who has not made such a check because of a single mistake, in analogy to the possibility of excusing auxiliary persons. The present Board does not see any reason why the same would not hold true in the case of a single deficient check. Accordingly, T 1561/05 [2.3] unambiguously states that the representative of the appellant “should have realised on March 1, 2006, that the time limit for filing a statement of grounds of appeal had already expired on that day” (in the same spirit, see T 719/03 [3.2.3])

If this requirement of a – correct – check by the representative himself is applied to a cross-check system where the cross-check is – as in the present case – carried out by an auxiliary person and a representative, then the standard of due care applicable to the representative in respect of the one of the two checks that he himself has to carry out cannot be less strict than in the case of a cross-check that is carried out only be auxiliary persons, where the representative has to carry out an additional third check. This means, at least in principle, that when the cross-check is carried out by himself and an auxiliary person, the representative is liable for his own failures regarding the check which he has performed and that there cannot be any possibility of excusing a single mistake in regard of his check.

Accordingly, the Board cannot endorse the considerations presented as obiter dictum in T 1095/06 [15] according to which, when there was a cross-check system that was independent of the professional representative concerned, and both the professional representative and this system both failed, the possibility would exist that the immediate cause for non-observance of the time limit was the unforeseeable failure of the independent system, and not lack of due care by the professional representative, so that re-establishment under A 122 was possible. In this respect it is sufficient to note that the Board, when drawing this conclusion, blatantly contradicted its own considerations under point [6] where it declined to extend the case law regarding the due care to be taken by the representative and the auxiliary person to everything that could be described as an “isolated mistake”.

(b) Conclusion in the present case

As stated above, a single mistake of a professional representative cannot, as a rule, be excused. If at all there are mistakes that can be excused, the mistaken calculation of the time limit in the present case is not among them. This is because, in view of the importance of the time limit for filing the statement of grounds of appeal, which is excluded from re-establishment, the patent engineer and professional representative – who may be expected to be aware of the provisions that are relevant for the calculation of time limits – had to concentrate on the calculation of the time limit and to check the correctness of the date that Ms M. had calculated. Therefore, it may remain unanswered whether on March 4, 2011, when Ms H. informed him of the expiration of the (miscalculated) time limit, he had the duty of checking again the correctness of this calculation.

“Exceptional circumstances”

[5.2.3] As already explained, according to the case law the requirement of due care can also be considered to have been fulfilled if non-compliance with the time limit results from exceptional circumstances.

In its request for re-establishment of April 21, 2011, which comprised a statement of grounds, the appellant has not argued that there had been circumstances within the meaning of this case law.

In its answer to the communication of the Board it has referred to decision T 832/99, which had been cited in the communication in regard of the due care to be taken by a patent engineer and representative, in order to draw a parallel between the miscalculation of the time limit for filing an appeal and the omission to record the time limit for filing an appeal in the computerised time limit management system after the time limit had been noted on the cover sheet of the impugned decision, due to an excess of work. The Board had not considered the omission of the recording to be a lack of due care excluding re-establishment.

During the OPs the Board informed the patent engineer acting for the appellant that he – in contrast to T 832/99 – had not invoked an excess of work (ArbeitsĂĽberlastung). The patent engineer responded that he had had to face a certain work load (Arbeitsbelastung), which had led him to hand over part of his files [to another person] a few weeks after the erroneous calculation of the time limit. However, during the month of February 2011 preceding the expiration of the time limit for filing the statement of grounds of appeal, there had not been a greater work load than during other months. There had not been a special physical or psychological situation on the day on which said time limit was calculated.

After the OPs, which were held on July 20, 2012, and at the end of which the factual debate was closed, the appellant filed a written submission on July 23, 2012. In [this letter] it pointed out that there had been a considerable work load on the patent engineer over the period in which the erroneous calculation occurred. There might have been an excess of work on the day on which the erroneous calculation occurred, but it was not possible any more to reconstruct it. Moreover, the patent engineer had been annoyed with certain events, which might have led to psychological stress and contributed to the erroneous calculation.

It is questionable whether the proof of a causal link between the missed time limit and exceptional circumstances could be successful if this submission was to be taken into account, but this question may remain unanswered.

First of all the case law of the Boards of appeal on whether the work load is to be taken into account is not consistent. In case T 41/09 [3.1] it was decided that excessive work pressure is usually not recognised as an exceptional circumstance. It was part of the representative’s organisational duty in exercising all due care to make contingency arrangements to ensure that all professional duties were fulfilled and that office services were maintained. The same holds true for the case of sickness (see the decision T 1401/05 [16], taken by the Board in different composition). As already explained, a sudden severe sickness can justify re-establishment. However the explanations of the patent engineer do not mention a sudden excess of work.

In view of the above case law there is considerable doubt as to whether an excess of work – or a significant work load – that does not appear suddenly, could in itself be sufficient, because it could suggest that there were organisational deficiencies in the company. Therefore, it is doubtful whether T 832/99 is to be followed in this respect.

Anyhow, as the Board has explained in the OPs and before in its communication dated May 10, 2012, according to the case law of the Boards of appeal, explanations of and supplements to the facts (Sachverhalt) that were initially presented are (only) admissible after the expiration of the time limit under A 122(2) together with R 136(1) if they do not go beyond the framework of the submissions filed in due time, i.e. do not create a new basis for the original request for re-establishment, see J 5/94 [2.3]. This is because for such explanations and supplements the two-month time limit for providing reasons for the request for re-establishment would not have been met. However, the assertion of a great work load would be such a submission. The same holds true for the psychological stress that was only asserted in the letter dated July 23, 2012.

Therefore, the explanations regarding the work load that were made during the OPs are to be dismissed as inadmissible. The same reasoning would apply to the explanations contained in the letter dated July 23, 2012 under the heading “Concerning the work load of the patent engineer” as well as the corresponding letter dated March 28, 2011 and the declaration in lieu of oath. Therefore, there is no reason to re-open the factual debate and to admit this submission into the proceedings.

The fact that the time limit was missed by two days only

[5.2.4] In its reasons statement of grounds for the request for re-establishment the appellant has invoked the fact that the time limit was missed by two days only. In this respect the Board reaffirms its statement made in the communication dated May 10, 2012 […]:
“The number of days by which a time limit was missed does not play any role whatsoever when the question of whether all due care required under A 122(1) EPC 1973 … is to be answered because this provision does not leave any room for applying the principle of proportionality in this respect. The Board (in different composition) has justified this in detail in its decision T 1465/07 [16]. In this context the Board also refers to the case law of the European Court of Justice. In its decision in case C 426/10 the Court has stated that the conclusion was not affected by the appellant’s reliance on the principle of proportionality. As a matter of fact, “the strict application of procedural rules serves the requirements of legal certainty and the need to avoid any discrimination or arbitrary treatment in the administration of justice” (marginal number 55).

In case decision J 8/09 [4.5] was to be understood to the effect that the number of days by which the time limit was exceeded – in line with earlier decisions of the Legal Board of appeal – could still play a role in borderline cases, using the principle of proportionality for supporting other grounds, then the Board most definitely will not endorse this opinion. Apart from that, the Board does not consider that the present case is a borderline case.”
The appellant did not challenge the explanations of the Board and of the European Court of Justice to which it referred. In a recent decision the Legal Board of appeal has expressed a similar opinion (cf. J 13/11 [12]).

However, the appellant was of the opinion that the time limit was actually exceeded by two days, which did not have any practical effect on legal security: even on a hardcopy from the European Patent Register of April 21, 2011, bearing the reference “Appeal filed”, there was no hint to the public that the appeal was to be dismissed as inadmissible. This was only visible from the documents, i.e. the electronic file. However, it could take two days until the documents were available in the electronic file, and in the present case the time limit was exceeded by only two days. Thus the request for re-establishment was to be granted.

The Board cannot endorse this reasoning. As stated in T 1465/07 [16] time limits serve the purpose of ensuring legal certainty and the proper administration of justice by avoiding any discrimination or arbitrary treatment. If the number of days by which a time limit was exceeded could be considered to be a “circumstance” within the meaning of A 122(1), then the general public could not be sure which number of days could be excused in view of the weight of the other circumstances. This would lead to the result that the actual expiration of the time limit could not be determined in an unambiguous way and that from case to case different numbers of days by which the time limit was exceeded could be accepted. This would amout to a violation of legal certainty and the proper administration of justice by discrimination or arbitrary treatment.

The question regarding the delay and the manner in which the public becomes aware of the fact that the time limit has been exceeded has no influence on this [conclusion]. The corresponding explanations of the appellant are of no avail. Therefore, there is no reason to re-open the factual debate and to admit the explanations contained in the written submission of July 23, 2012 under the header “Concerning the Register entry of April 21, 2011” and the enclosed extract from the Register into the proceedings.

Result

[5.3] The patent engineer acting for the applicant has not taken all due care required under A 122(1). As shown above, there was no isolated mistake within a normally satisfactory monitoring system nor have there been exceptional circumstances. Thus the request for re-establishment pursuant to A 122(2), second sentence has to be dismissed.

Exclusion of a declaration in lieu of oath from file inspection

[6] The appellant requested that the declaration in lieu of oath filed together with the written submission dated July 23, 2012, be excluded from file inspection pursuant to R 144 (d) and the “Decision of the President” dated September 7, 2011, number 2 a.

According to R 144 (d) together with Article 1(2)(a) of the Decision of the President dated 12 July 2007 concerning documents excluded from file inspection (OJ EPO, Special edition 3/2007, p. 125, identical to the Decision of the President dated 7 September 2001 (OJ EPO 2001, p. 458) referred to by the appellant, which has been replaced by the Decision dated 12 July 2007) documents or parts thereof are “excluded from file inspection at the reasoned request of a party or his representative if their inspection would be prejudicial to the legitimate personal or economic interests of natural or legal persons”

The facts mentioned in the concise declaration in lieu of oath concern the irritation regarding certain events of that period which the patent engineer has invoked. The Board is of the opinion that public access to explanations concerning these events and their effect on the patent engineer would prima facie be prejudicial to the legitimate professional and, therefore, at least economic interests of the patent engineer, so that, by way of exception, there is no need for an explicit justification of why the exclusion is required (all the more as the Board could order the exclusion under letter (b) of said Article 1(2) of its own motion).

Therefore, the declaration in lieu of oath, which has been excluded from file inspection provisionally according to Article 1(3), first sentence, of the above mentioned Decision of the President, has to be excluded for good from file inspection (cf. T 1401/05 [5]). Moreover, the written submission dated July 23, 2012, together with its enclosures – among which the declaration in lieu of oath under consideration – has not been admitted into the proceedings anyway, so that this assertion could not have had any influence on the decision of the Board.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

11 comments:

Anonymous said...

Like I said before, I'll take the US revival standard any day over this very patent and practitioner unfriendly all due candor standard. Simple mistakes discovered within days should not be so drastically punished.

Anonymous said...

Sorry, not all due candor, all due care. Too much US law on my mind today.

MaxDrei said...

For the public authority, the custodian of the public interest, the EPO, it is always going to be a balance, isn't it, between the interest of the public in legal certainty (whether the patent might rise again) and that of the rights owner who is not careful enough in looking after his own valuable property.

In the lawyer-driven USA, your lawyer can apply (with good prospects of success) to recover rights inadvertently dropped, even years and years after the moment of carelessness. So no balance there then. But never mind that: important is that no harm should come to any patent lawyer, eh?

oliver said...

I like the concept of all due candor, though.

Roufousse T. Fairfly said...

... applying the 10-day-rule in a wrong way ...

Coming to think about this, this is a type of addition which is not commutative.

Anonymous said...

Max Drei, no harm to any patent lawyer is a happy coincidence to no harm to any patent applicant for such a trivial mistake. Further, I will never understand where this protection of the public interest extends to whether a patent will issue or not. The sole role of a patent office should be to examine whether the claims meet the requirements for patentability set forth in the statue, here EPC. Third parties have plenty of oppotunities to involve themselves in the process.

MaxDrei said...

Nice to have a reaction, anon, but I wish I could understand your point. Are you saying that, if the patent attorney error is trivial, then the PTO should excuse it, every time?

Myshkin said...

I'm not familiar with the "US revival standard", but from what I can find about it, it applies to the case where the applicant stopped paying maintenance / renewal fees.

For those fees, the EPC already unconditionally gives a 6 month additional period. After that, the applicant will need to show due care, which is not easy.

In the present case it is not about renewal fees, but about filing an appeal before expiry of the appeal period. I would be surprised if US courts would be much more liberal at overlooking missed appeal periods.

In the present case, it was not a case of nasty once in a lifetime events that understandably prevented the representative from getting the statement of grounds out in time. The attorney (or someone for whom he was responsible) simply messed up when applying some very simple calculation rules. (Or would it be better to remove the 10-day rule?) It cannot be too much to ask from a professional representative that he is able to correctly calculate a time limit.

If a lawyer misses the time limit to appeal against the life sentence of his client and his only excuse is that he did not succeed in correctly calculating a date, it is bad luck for the client.

Myshkin said...

This blog post seems to confirm that US courts don't apply a more liberal standard regarding "trivial mistakes".

MaxDrei said...

http://fishiplaw.com/strategic-patenting/chapter-14---office-procedures_25.html

Myshkin surmises that the US is not as liberal as I suggested on 21 Nov above. He makes a good point, so I looked for stuff to back up my assertion above. I found the Link above. I cite it for its mention that there is no end to the term in which you can petition for restoration of your lapsed US patent.

I concede that's in the context Myshkin suggests, post-issue renewal fees. Should other circumstances of lapse in the USA differ from that standard? The Link provided by Myshkin suggests that circumstances might make a difference, although his link is to a court action, not patents and not PTO.

Myshkin said...

I was reacting mainly to the Anonymous referring to the "US revival standard". I'm not disputing that this standard is much more "patent friendly" than Art. 122 EPC (I simply don't know). But I have some doubt that it applies to the US equivalent of the case we have here.

My link is to a court action, yes. But the Boards of Appeal are courts, or at least should be compared to courts. (Anyway, I found that link through this blog, which adds that (US) agencies are often even more strict. Maybe that does not apply to the USPTO, but still, "patent granting law" is just a part of administrative law.)

I suppose we can agree that not appealing a refusal (in time) is incomparable to the "lapsing" of a US patent, which is the subject of your link.

Anyway, I dug around a bit.

If you appeal a USPTO decision at the CAFC the standard is "excusable neglect", see section 1.304 MPEP. The Director of the USPTO seems to decide, but I suppose the CAFC will review this decision.

Maybe we should compare instead to filing an appeal with the administrative BPAI. According to section 41.4 MPEP, the effect of a late filing depends on whether it results in the application becoming abandoned or not. In the formed case, the action to take is revival. In the latter case, the late filing will be excused upon a showing of excusable neglect or a Board determination that consideration on the merits would be in the interest of justice.

I'm guessing that after a refusal, a late filing does not result in the application becoming abandoned, because the application was already refused/rejected. So the possibilities are showing excusable neglect (which seems close to what Art. 122 requires), or a determination by the BPAI that consideration on the merits would be "in the interest of justice". I don't know what that means in practice, but it probably does give more practical chances.

Contrary to my initial assumption, revival does not only apply to lapsed patents. It also applies to abandoned applications (which I am guessing do not include rejected applications). The delay must be either "unavoidable" or "unintentional". Unavoidable seems to be much like Art. 122 except for the 1-year time limit of R. 136(1). Unintentional merely requires a statement. (But I understand from other sources that if at some later point in time it turns out that the abandonment was not "unintentional", we have a case of inequitable conduct which may turn invalid the whole patent family.)