Wednesday, 20 February 2013

T 1663/12 – A Drop-Dead Appeal

In the present case the patent proprietor filed a request for re-establishment into the time limit for filing a notice of appeal.

The factual situation was as follows (sorry for the length, but I find the modus operandi interesting):

Mr Adrian F. had worked for 26 years in the law firm representing the appellant but had retired from the partnership on June 30, 2011. As a number of significant cases that he was handling were still pending at the time of his retirement, he continued to deal with these cases, as a consultant of the law firm.

Since he did not visit the offices of the law firm daily, but on a regularly basis, a system was put in place that ensured that a partner was kept informed of what was happening on a case and that all information was passed promptly to Adrian F. The latter still had access to documents saved on the server and to the email system of the law firm and, on a daily basis, got the so-called prompt list showing all due dates which had been registered in the firm’s software (Inprotech). Copies of his outgoing emails were printed and passed to a partner. All documents and due dates were electronically registered and checked by the Records Department.

The appellant explained that the failure to file the notice of appeal had been caused by a docketing mistake in the law firm during sorting of the incoming mail.

Incoming mail was typically received between 11 am and 1 pm. All incoming mail was sorted initially by Mr Duncan H., a senior member of the Records Department, with the assistance of another senior member, Mr Andrew S. when there was a particularly large amount of mail to be sorted. The mail was stamped, identified and mail involving a “drop-dead” deadline (such as revocation decisions) was singled out; all other mail was put into the relevant mail baskets. Any delivery card and acknowledgment sheet would be detached and pinned to the back of the communication.

As soon as all the mail had been sorted, the front page of all the “drop-dead” communications that had been separated out from the rest of the incoming mail was photocopied and the copies were given to the Manager of the Records Department, Ms Tricia L. In this way she was kept informed of all the “drop-dead” communications. She went through these on the next working day, after the communications had been processed by the Records Department, and checked that the deadlines had been correctly docketed in Inprotech.

After the copy of the first page of the “drop-dead” communication had been made, a tick was placed on the bottom left hand corner of the original communication to confirm that the copy of the front page had been given to Tricia L. The original “drop-dead” communication was then put into the mail basket of the appropriate section of the Records Department. “Drop-dead” communications would therefore always be on top of the rest of the mail in the relevant mail basket. The basket of sorted mail was then given to the head of the relevant Records section (i.e. the team leader).

In the case of European patent applications and patent opposition cases, Andrew S. was the team leader. He reviewed all the mail to check for anything requiring immediate processing because of an immediate deadline e.g. filing instructions where there was an imminent deadline. Such urgent mail was processed first (involving entry of details into the database and passing urgently to a partner for action). Revocation decisions did not fall into the category of urgent mail requiring immediate attention. After urgent mail had been separated by the team leader, the remaining mail was passed to one of the experienced clerks in the relevant section to be processed on the following working day.

The first step in the processing involved checking that the reference was correct and, if not, marking it up with the correct reference. This was done on each item of mail. The responsible clerks in relation to EPO communications were Mr Richard W. and Mr Elliott G. Having completed their checks, they then passed the mail to another clerk, Ms Grace B., who was responsible for retrieving the relevant file. The file with the mail attached to it was then passed to another clerk, Ms Medinat N., for further processing, including input of any due dates into Inprotech. If the file was not in the central filing system in the Records Department (e.g. if it was in the room of one of the attorneys), the mail was passed back to Richard W. and Elliott G. without the file. They were responsible for the further processing of mail in such cases.

When Richard W. or Elliott G. were processing a revocation decision, they needed to arrange for the physical file to be retrieved from the relevant attorney so that the revocation decision could be processed appropriately (including applying a sticker to the front of the file indicating that the case was in appeal proceedings). In order for the file to be retrieved, one of them would mark the top right hand corner of the decision with a tick and the initials of the person who had the file and then pass the communication to Grace B. so that she could retrieve the file from this person. Once Grace B. had retrieved the file, it was passed to Medinat N. for processing of the revocation decision.

Inprotech automatically calculated the deadlines for filing the notice of appeal and the statement of grounds (plus the 10 days) when the date of the revocation decision was entered. Medinat N. would then mark up the front of the communication in red with any relevant due date so that it was immediately apparent to the relevant partner/attorney. Where the communication was a revocation decision, Medinat N. would also place a sticker on the front of the physical file indicating that the case was in appeal proceedings.

Once Medinat N. had completed her processing work, she would initial the receipt stamp that the mail sorters had placed on the communication and it was then passed to the responsible partner with the file, clipped to the front of the file or bound to the front of the file with an elastic band. In the case of revocation decisions, the delivery card and acknowledgment sheet were clipped to the top of the communication so that the responsible partner could immediately sign, date and return these to the Records Department for sending back to the EPO.

After the mail has been processed and due dates docketed in Inprotech, Tricia L. went through the copies she had been given of the “drop-dead” communications and checked for each case that deadlines had been correctly docketed. Inprotech generated daily prompt lists for all attorneys and trainees (i.e. fee earners), showing the due dates for the cases for which that attorney was responsible. In the case of due dates for filing a notice of appeal from a revocation decision, the due date would start to appear on the prompt list from the day after the decision was entered into Inprotech (i.e. about two months in advance of the due date). The prompt lists were emailed to the attorneys every morning. Andrew L.’s prompt lists were emailed to all the partners every Monday.

The communications under consideration were received on 8 May 2012, i.e. the first working day after a public holiday in the UK. There was therefore a particularly large volume of mail on that day and as a result Andrew S. assisted Duncan H. with sorting the mail.

The minutes were received on 8 May 2012 and had been duly stamped with the receipt stamp when it was processed as incoming mail. The reference on it had been corrected by Elliott G. to show the correct opposition file reference, the receipt stamp had been initialled by Richard W. and Dr Paul H.’s initials had been marked at the top right hand corner of the page, by Richard W., to indicate that Paul H. was the responsible partner. No due date was marked on the front of the minutes in red, or was docketed in Inprotech, as no due date is associated with minutes. There were no markings on the revocation decision, which indicated that it has not been seen during the mail sorting or by the Records Department and has not been processed at all. In consequence, no due date was docketed in Inprotech.

The patent proprietor believed that the revocation decision must have been stapled to the back of the minutes, and that the stapling was done in such a way that it was not readily apparent that there were two separate communications - the second being a “drop-dead” communication. The revocation decision must have remained stapled to the back of the minutes when the minutes were subsequently processed by Richard W.

Paul H., who was handling the prosecution work for the divisional patent application of the patent under consideration, did not recall whether he noticed the revocation decision. He signed and dated the delivery card and acknowledgment letter with the date that was stamped on the minutes but did not review the documents that were being acknowledged. After dealing with the acknowledgments, he passed the file to the secretary Ms Sandra W. with instructions to email the EPO communication to Adrian F. In order to do so, Sandra W. needed to scan it and, therefore, to remove any staples so that the document could go through the paper feed tray. In doing this she would have seen there were two documents and sent them as two separate, named attachments. For unknown reasons, Adrian F. did not look at the attachments to the email.

On May 16, he received an email from Ms Melanie B., an employee of the patent proprietor, informing him that she had found the decision on-line and sought confirmation of the due dates. She attached a copy of the decision and other documents from the EPO website. Adrian F. replied on the next day; he explained the deadlines (July 12 and September 12, respectively) and announced a draft statement of grounds for the end of July. When Melanie B. explained that this was too late, Adrian F. concentrated to the statement of grounds, rather than on the filing of the notice of appeal. He did not notice that the deadline for filing the notice of appeal was not on his prompt list.

It was in the course of email exchanges with his client on July 16 to try to fix a time for discussion of the EPO appeal, that Adrian F. suddenly realised that the notice of appeal had not been filed.

It is hardly surprising that the Board rejected the request for re-establishment:

Admissibility of the appeal

[3] Pursuant to A 108, first sentence, a notice of appeal must be filed within two months after the date of notification of the decision appealed, and pursuant to the second sentence of this provision no appeal is deemed to have been filed until the fee for appeal has been paid. In the present case, the time limit for filing a notice of appeal and paying the appeal fee expired on 12 July 2012 (R 126(2) and R 131(2) and (4)). The notice of appeal together with the debit order for the appeal fee were indisputably received on 19 July 2012. Therefore, the appeal should be deemed not to have been filed according to A 108, second sentence, unless the appellant’s application for re-establishment can be allowed.

Appellant’s request for re-establishment of rights

[4] The request for re-establishment of rights complies with the formal requirements of A 122(1) in conjunction with R 136(1) and (2). The cause of non-compliance was removed in the evening of 16 July 2012 when the appellant’s representative realised that he had not arranged for the notice of appeal to be filed. The request for re-establishment together with the debit order for the required fees was filed on 25 July 2012 and, therefore, within the prescribed two-month time limit.

Jurisprudence on the requirement of “all due care”

[5] In accordance with A 122(1), an applicant has his rights re-established upon request if he was unable to observe a time limit vis-à-vis the EPO “in spite of all due care required by the circumstances having been taken”. Where the applicant has authorised a professional representative to represent it before the EPO, the “all due care” requirement applies to the professional representative (see e.g. decision J 3/93 [2-2.1]). It is the established case law of the Boards of Appeal that in a large firm this “all due care” requirement is only fulfilled if the non-compliance with the time limit results from an isolated mistake within a normally satisfactory system for monitoring time limits (see e.g. decision T 428/98 [3.3]) and if at least one independent cross-check is built into the system (decision T 1726/08 [13]). The systems used for the monitoring of time limits may include the use of specialised computer systems or software. However, whether any system fulfils the requirement of “all due care” depends on the individual circumstances of each case (see e.g. decision T 902/05 [6]). If the representative has entrusted to an assistant the performance of routine tasks such as noting time limits, the same strict standards of all due care are not expected of the assistant as are expected of the applicant or his representative. 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 (see e.g. decision T 1465/07 [18]).

“All due care” under the circumstances of the present case

[6] Applying the foregoing principles to the present case, the Board is not satisfied that the appellant’s monitoring system was sufficient to meet the requirement of “all due care” under A 122(1) as applied by the Boards of Appeal. In particular, the Board does not share the appellant’s opinion that a combination of exceptional circumstances led to the result that the time monitoring system of its large firm failed in an excusable way. Rather, the Board assesses these “exceptional” circumstances as an indication that [the law firm’s] time monitoring system lacked reliability under the circumstances of the present case.

[7] Although there is no proof that the revocation decision had been stapled to the back of the minutes, the Board accepts in favour of the appellant that this indeed happened at the EPO. However, this may be undesirable but it is not a faulty handling of the outgoing mail because it is common practice to staple items of outgoing mail together and any recipient of an official letter must be aware of this practice and is not freed from his duty to read all the sheets of a document.

[8] In the following the Board will discuss and assess the decisive processing steps as described by the appellant with regard to the requirement of “all due care”.

[9] The fact that the revocation decision passed through so many hands without being identified as such indicates that these persons were not sufficiently instructed that mail must be read completely and thoroughly, or that no effective cross-check was performed.

[10] In the present case, the first mistake happened when the clerk [Andrew S.] assisted [Duncan H.] with sorting the incoming mail and neither of them identified the revocation decision possibly stapled to the back of the minutes.

[11] Consequently, [Andrew S.] was not able to carry out an independent cross-check of this first sorting when acting as team leader of the Records Department, because the Board cannot exclude the possibility that it was he who made the first mistake.

[12] [Tricia L.] could not perform any cross-check because she did not get the copy of the cover sheet of the revocation decision.

[13] Even if the experienced clerks [Richard W.] and [Elliott G.] were only concerned with checking the correct reference numbers of the documents, they should have flicked through all the pages to do their job properly and could then have identified the revocation decision.

[14] The appellant claimed that [Medinat N.] would have been entrusted with crosschecking the first mail sorting, and referred to the statement in [Paul H.’s] declaration that: “The file with the mail attached to it is then passed to another experienced clerk, [Medinat N.], for further processing, including input of any due dates into Inprotech”. The Board is not convinced that [Medinat N.] receipted the file in the present case because [Richard W.] initialled the receipt stamp on the minutes instead of [Medinat N.] But even if [Medinat N.] did indeed perform this cross-check, that would be a further clerk who failed to read the documents completely and thoroughly. The failing of several clerks is an indication that they were not sufficiently instructed in performing their tasks, and not regularly supervised. In this regard the Board agrees with the [opponents] that [Adrian F.’s] and [Paul H.’s] declarations are not properly substantiated. It is not sufficient to declare that a clerk is one of the most senior and experienced clerks, or familiar with revocation decision, without showing in detail how his day-to-day work is supervised.

[15] In the Board’s view the series of failures continued when [Paul H.], one of the appellant’s representatives, got the paper file and signed the delivery card and acknowledgment letter with the date that was stamped on the minutes, but without reviewing the documents that were being acknowledged. The appellant explained this failure by the fact that the documents had to be communicated as soon as possible to [Adrian F.], the attorney responsible for managing this case. The Board does not agree with this view. The signing of an acknowledgment letter is a highly important legal action in the patent application procedure and must not be performed without reviewing the documents received. That was the reason why this task was correctly allocated by [the law firm] to an attorney and not to an experienced clerk. The appellant rejected the Board’s preliminary opinion that the cause of the mishandling of the revocation decision also had to be seen in the shared responsibility between [Paul H.] and [Adrian F.] because of [Adrian F.’s] pre-agreed overall responsibility to manage the case. However, signing the acknowledgment letter and reviewing the documents to identify their nature cannot be separated. A correct processing of the documents would have required that either [Paul H.] or [Adrian F.] both signed and identified the documents.

[16] A further failure happened when ]Adrian F.] got [Sandra W.’s] email indicating that [the law firm] had received two documents, the minutes and the revocation decision of the present case, and did not open and read the attached documents and did not carry out his own checks to ensure that the dates had been properly docketed. It is undisputable that [Adrian F.] would have noticed the missing ticks and due date markers on the cover sheet of the revocation decision if he had read the scanned documents. In his declaration [Adrian F.] stated inter alia that:
“I make a point of checking due dates on EPO communications by the Records Department. This almost invariably happens in the context of reporting the communication to the client. In the present case, I did check the deadline for appeal, but I did so in the context of responding to [Melanie B.’s] email. I therefore had in front of me the copy of the Decision, which she had provided, rather than the copy attached to [Sandra W.’s] email. That meant that I did not see the absence of due date markings by the Records Department on the Decision.”
The Board holds that it is a serious mistake not to work on the basis of [the law firm’s] own documents and it is not in accordance with the proper discharge of a professional representative’s duty to make decisions without proofreading one’s own documents. In addition, [Adrian F.] was not entitled to rely on [Sandra W.’s] statement in the email of 25 July 2012 that the minutes and the revocation decision were attached to the email without checking the documents and at least verifying the correct receipt stamp date, because this date could have triggered a later time limit for filing an appeal (R 126(2)). This handling of incoming mail is not a mere isolated error but a systematically flawed way of processing a case.

[17] Furthermore, on 16 May 2012, [Adrian F.] was explicitly instructed by his client to file an appeal but he delayed the preparation of the notice of appeal due to other tasks, without checking whether the due date had been properly recorded either by consulting up in Inprotech or at least by reviewing the electronic documents of [the law firm]. Filing an appeal is a highly critical legal act, and it does not correspond to “all due care” for the responsible attorney only to rely on a normally satisfactory functioning of a system, without making sure that he would be reminded of the date if necessary (see similar decision T 439/06 [8,10]).

[18] Lastly, the [opponents] were right to point out that the appellant cannot argue that the time monitoring system of [the law firm] worked reliably for many years, because [Adrian F.] left the partnership in June 2011 and no longer visited its offices on a daily basis. Contrary to the appellant’s submissions, the Board holds that this organisational change weakened the existing time monitoring system in such a way that it failed in the present case (see point [15] above).

[19] The appellant further argued that in assessing the requirement of “all due care” under A 122(1) it should be borne in mind that the notice of appeal was filed only a short time after the due date and that the public should have been aware that an appeal would be filed. The present Board does not share the appellant’s opinion that the principle of proportionality can be applied when assessing the requirement of “all due care” under A 122(1). Rather, it takes the view that the requirement of “all due care” means that only circumstances which happened before the time limit expired can be considered or, in other words, the obligation to exercise “all due care” must be assessed in the light of the situation as it stood before the time limit expired (see decisions T 1465/07 [16], and T 439/06 [15]).

[20] In considering the requirement of “all due care” under A 122(1), the Boards have ruled in numerous decisions that the circumstances of each case must be looked at as a whole (see e.g. decision T 1465/07 [18]). In the present case, looking at the whole series of failures and mistakes which took place, the Board sees no basis to argue that the failure to meet the appeal time limit could be considered an isolated mistake in a well-functioning time monitoring system.

Final conclusions

[21] As, therefore, the circumstances of the present case do not satisfy the requirement of “all due care” pursuant to A 122(1), the request for re-establishment must be refused. Consequently, both the notice of appeal and the payment of the appeal fee were belated and the appeal is deemed not to have been filed pursuant to A 108, first sentence, EPC. Furthermore, as there is no appeal in existence, the appeal fee must be reimbursed (J 21/80 [4], T 493/08 [7]).

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

The file wrapper can be found here.


Roufousse T. Fairfly said...

Both the Provision of a copy of the minutes (Form 2042) and the decision (Form 2331) are both sent using registered mail, if one believes the note on the bottom left corner. Even though both were issued on the same day, I am a bit surprised that they would be sent together, as the mail room keeps a register of every outgoing piece of mail, and makes sure that each document is sent exactly on the third day after it was produced, on the date marked on the document, and notes their registration numbers in a ledger. The bar code only contains the application number, I don't know whether the details of the documents sent (pages, form numbers) are also recorded.

I wasn't aware of a practice tending to save postage by batching letters together, but I did see the opposite where documents were specifically sent separately to certain applicants who tended to complain about "missing" items.

But the Acknowledgement of a Document (Form 2936) only mentions Form 2331 (the decision), and there is no corresponding form for the minutes. Furthermore, I can't see in the wrapper the copy of the acknowledgement form returned dated and signed.

In any case, the decision documents occupy nearly 20 pages, which makes them a little difficult to mistake for minutes, which in this case are of the terse "we met, we discussed, we decided." variety.

To the risk of sounding cynical, if you ever need to invoke Art. 122, that is evidence by itself that the “all due care” requirement is not satisfied...

A system of cross-checking could perhaps include configuring the Register Alert for every active EP case, and reconciling the data between received letters and the online information. Since the alert e-mail should normally arrive before the physical letter, a card could provide advance warning of what to look for. The cards are marked sorted by date. Once the letter is received, the card is put aside. The number of cards in the file wouldn't be excessive, it would be equivalent to the number of letters received over a few days. Cards that older than 10 days would be singled out for verification. A disadvantage is that you couldn't keep track of national, PCT or overseas filings.

In any case, I would expect that the US attorney to be fed with fac-similes from the register, rather than bothering to scan or fax the documents again.