D 2/10 – Saved By The Bell

The present decision might be of interest for patent attorneys because it delves into some little known provisions of the regulations on discipline.

Two patent attorneys of a Swedish law firm were dealing with the European patent application; only one of them (Mr C.) was entitled to act before the EPO, whereas the other (Mr G) was only a Swedish patent attorney. Mr C. signed all the documents, but in fact Mr G. was handling the prosecution.

In a letter dated May 19, 2003, the applicant instructed Mr G. to file a divisional. For some reason Mr G. failed to do so. The mistake was discovered after the publication of the grant of the patent based on what should have been the parent application. A request for re-establishment was refused.

The applicant filed a complaint before epi on March 24, 2009. Apparently, there had already been a complaint (filed on February 21, 2008) that had been erroneously withdrawn by the complainant.

The complaint was forwarded to the chairman and the secretary of the Disciplinary Committee (DC) on the same day, but it took almost 6 months before the President of the epi and the President of the EPO were invited to comment (on September 9, 2009).

The DC dismissed the complaint as inadmissible and closed the disciplinary proceedings.

The President of the epi then filed the appeal.

The Disciplinary Board dismissed the appeal, for the following reasons:

Legal basis

Regulation on discipline for professional representatives (RDR)

[3.1] Article 1 RDR General professional obligations

(1) A professional representative shall exercise his profession conscientiously and in a manner appropriate to its dignity. In particular, he shall not knowingly make any false or misleading statement.

(2) A professional representative shall conduct himself in such a manner as not to prejudice the necessary confidence in his profession.

Article 26 RDR Period of limitation

(1) Proceedings in respect of a failure to comply with professional obligations shall be barred after a period of five years. The period of limitation shall begin on the date of such failure.

(2) The period of limitation shall be interrupted by any procedural step taken in respect of such failure by a disciplinary body or one of its members against the professional representative concerned. 

Each interruption shall cause the period of limitation to begin again.

Additional Rules of Procedure of the DC of the epi

(RPDC, OJ EPO 1980, 177, amended in OJ EPO 2007, 552)

[3.2] Article 7(4), (5) RPDC Complaints

(4) The Registrar shall:

a) register each complaint together with the date of receipt;

b) immediately send copies of the complaint to the Chairman and the Secretary of the Disciplinary Committee, to the President of the Council of the Institute and the President of the European Patent Office;

c) notify the Chairman of the Disciplinary Board of the European Patent Office of the receipt of a complaint and of the date of receipt.

(5) The Chairman of the Disciplinary Committee shall without delay nominate a Chamber and assign the complaint to that Chamber.

Article 8(1) RPDC Procedure following receipt of a Complaint

Unless a complaint is summarily dismissed on the ground mentioned in Article 18 hereof, the Chamber concerned shall, without delay, send a copy of the complaint, together with a reference to where these Rules of Procedure are published, to the professional representative concerned, who shall be given a period of two months after receipt by him of the copy of the complaint to present a written defence, which shall be addressed to the rapporteur.

Article 18 RPDC Procedure following summary dismissal of a Complaint

If a complaint is summarily dismissed by a Chamber on the ground that it clearly discloses no facts upon which an allegation of breach of the Rules of Professional Conduct could be made against the professional representative concerned so that it is, therefore, not necessary to call upon him to present a defence, then:

a) the complainant shall be informed accordingly by letter;

b) the persons mentioned in Article 7, paragraph 4 hereof shall be sent copies of the said letter and of the decision;

c) the professional representative concerned shall be sent a copy of the said letter, a copy of the complaint and a copy of the decision.

Relevant standard for the imposition of disciplinary measures

[4] The appeal would be allowable if the professional representative concerned had failed to comply with his professional obligations according to Article 1 RDR and if the proceedings in respect of this failure were not barred due to the period of limitation according to Article 26(1) RDR.

According to decision D 5/86 an infringement of the rules of professional conduct must be established to the satisfaction of the disciplinary body before it can impose a disciplinary measure. Absolute certainty is not required, but a degree of probability which in human experience verges on certainty. A disciplinary measure cannot be imposed if there is reasonable doubt as to whether the infringement has occurred (cf. Case Law, 6th edition 2010, p. 942 et seq.).

Non-compliance with the standards of professional conduct

[5] The issue of the current appeal is whether or not the Defendant as a European professional representative and member of epi bears any responsibility for the failure of Mr G. to file a divisional patent application as it was requested by the applicant.

According to the facts established by the DC the Defendant acted as the only European professional representative for the applicant, but the handling of the case within the P C AB was assigned to Mr G.

Although it is neither uncommon nor prohibited under the RDR and the epi Code of Conduct (OJ EPO 2003, 523) for a professional representative to engage and even delegate some of his tasks to a person not qualified as a European professional representative or not even qualified as a patent attorney on the national level, this does not mean that a European professional representative could relieve himself of his professional duties vis-à-vis his clients and epi.

Since Mr G. was not a qualified European professional representative and thus could not act vis-à-vis the EPO, the Defendant retained at least part of the mandate entrusted to him by the applicant. In relation to the EPO, i.e. for any official acts, in particular filing applications and procedural requests, the Defendant was the only responsible European patent attorney and Mr G, regardless of his qualification as Swedish Patent Attorney, acted as his assistant. As a result, the Defendant remained ultimately responsible for the case vis-à-vis the applicant as the only European professional representative. His continuing responsibility necessitated some degree of supervision over the acting Swedish patent attorney Mr G.

It could be open to discussion whether the Defendant indeed acted in accordance with his supervising duties by restricting his contribution to the (main) patent application to merely signing all official documents prepared solely by Mr G. without any further involvement in the internal management of the prosecution of the patent application. However, this issue does not need to be discussed in detail because the Defendant’s alleged failure to comply with his professional duties can no longer be a subject of disciplinary proceedings for formal reasons.

Period of limitation

[6.1] Article 26(1) RDR provides for a period of limitation of five years beginning on the date of the failure to comply with professional obligations. The alleged failure in question, to supervise Mr G. in the handling of the main application, was not punctual and isolated but rather of a continuous nature. However, it culminated in the failure to file a European divisional patent application in due time. The filing would have been possible until the grant of the main patent application of which the professional representative concerned was notified by the EPO with letter of 1 April 2004, published in the European Patent Bulletin 04/20 of 12 May 2004. This date marks the (last) date of the alleged failure.

However, one could consider “extending” said failure until the applicant had been informed of the fact that its instruction to file a European divisional patent application had not been observed. This was done by Mr G. with letter of 7 June 2004. Since the failure to file a European divisional application in due time was remediless – it was, in particular, not open for a request for re-establishment of rights (the respective request dated 14 April 2005 was finally rejected as inadmissible by the Receiving Section with its decision of 8 March 2006, application no. 05008230.4) –, the failure was “completed” at the latest on the date of receipt of the letter sent by Mr G. to the applicant, i.e. a couple of days after 7 June 2004. Assuming that the delivery of said letter took no longer than ten days, the period of limitation ended on 17 June 2009.

After that date any proceedings are barred in respect of the alleged failure by the Defendant to supervise Mr G. who was not a qualified European professional representative but who, nevertheless, was assigned to handle the main application and failed to observe the applicant’s instruction to file a divisional application in due time.

[6.2] According to Article 26(2) RDR the period of limitation shall be interrupted by any procedural step taken in respect of such failure by a disciplinary body or one of its members against the professional representative concerned. Each interruption shall cause the period of limitation to begin again.

[6.2.1] The Appellant is right in that Article 26 RDR as well as any other provision in the RDR does not give an explicit definition of what is meant by the legal term “any procedural step”.

However, according to the constant practice of the Disciplinary Board of Appeal, the interpretation of a provision that contains undefined legal terms follows the basic rules of interpretation:

a) the literal meaning of the provision and its legal terms (semantic interpretation) as a starting point as well as the limit of any interpretation,

b) the meaning of the provision and its legal terms within its legal context (systematic interpretation),

c) the objective purpose of the provision and its legal terms (teleological interpretation) taking into consideration all the interests involved, and, if necessary

d) intentions of the historic legislator (historical interpretation).

[6.2.2] Applying this methodical approach the Board finds that already the wording of Article 26(2) RDR gives a first indication as to what kind of procedural step is needed to effect an interruption.

Article 26(2) RDR provides that the period of limitation shall be interrupted by any procedural step taken in respect of such failure by a disciplinary body or one of its members against the professional representative concerned.

It follows from this wording already that not any and every procedural step taken suffices for triggering an interruption but only a (specific) procedural step taken against the professional representative concerned. This means that only a procedural step directed against the professional representative concerned can be qualified as being of an interrupting nature. In other words, mere internal procedural steps to administer disciplinary proceedings are excluded from the wording of Article 26(2) RDR.

[6.2.3] In addition, taking into consideration the context of Article 26 RDR one needs to look at other provisions with regard to disciplinary proceedings. In this context, Articles 7(4) and (5), 8(1) and 18 RPDC are of particular significance.

These articles describe the first relevant procedural steps to be taken by the DC after a complaint has been filed. Once the internal administration of a new complaint has been completed by the registrar (Article 7(4) RPDC) and once the members of the DC chamber have been nominated (Article 7(5) RPDC), the DC chamber summarily assesses the case as to whether it discloses facts upon which an allegation of breach of the Rules of Professional Conduct could be made against the professional representative concerned. If the chamber cannot establish sufficient facts in that respect, it dismisses the complaint and informs the professional representative of its decision (Article 18 lit. c) RPDC). If, on the other hand, the chamber can establish sufficient facts, it then informs the professional representative concerned of the complaint and invites him to submit his defence (Article 8(1) RPDC). Article 7(4) lit. b) RPDC clearly provides for copies of any new complaint being forwarded to the President of epi and the President of the EPO. Likewise, according to Article 7(4) lit. c) RPDC the Chairman of the Disciplinary Board of the EPO needs to be notified of the complaint.

It follows from these provisions that, contrary to what the Appellant submitted, the proceedings of the DC are not – and must not be – secret or confidential in a sense that the professional representative concerned might not necessarily be contacted by the DC (cf. Articles 8(1) and 18 lit. c) RPDC) and that third parties to the proceedings (like the President of epi and the President of the EPO) are not made aware of the fact that a complaint has been filed (Articles 7(4) lit. b) and 18 lit. b) RPDC).

As a consequence, the disciplinary proceedings involve both internal procedural arrangements (e.g. registration of each new complaint together with the date of receipt, notifying the chairman of the DC of the receipt of a complaint and of the date of receipt, nomination of the members of the DC chamber) and external procedural steps (e.g. notifying the President of epi and the President of the EPO, informing the professional representative concerned of the complaint), only the latter being either taken directly vis-à-vis the professional representative concerned or somehow noticeable to third parties. Mere internal procedural arrangements, e.g. internal letters or preparatory acts of the DC, do not cause an interruption of the period of limitation.

Thus, the legal term “procedural step taken … against the professional representative concerned” within the meaning of Article 26(2) RDR is to be interpreted as being distinct from any internal procedural arrangement.

[6.2.4] Further, bearing in mind that the nature of disciplinary proceedings and its potential consequences (cf. Article 4(1) RDR) are similar to criminal proceedings the legal term needs to be construed in a restrictive way.

The purpose of a period of limitation is to restrict the possibility of “punishment” for a failure to comply with the rules of professional conduct committed a long time ago. Such an “ancient” infringement of rules should not give rise to disciplinary proceedings for reasons of legal certainty.

Thus and like in criminal procedural law, the main reason for a period of limitation is to find a balance between the interest of the injured party on the one hand and the interest of the alleged offender on the other hand demanding the former to quickly bring his charges so that the proceedings can commence and allowing the latter to get on with his life and not have legal battles from his past come up unexpectedly.

[6.2.5] As a consequence, the period of limitation can only be interrupted by procedural steps that are either taken directly vis-à-vis the professional representative concerned or that are somehow noticeable to third parties. Mere internal procedural arrangements, e.g. internal letters or preparatory acts of the DC, do not cause an interruption of the period of limitation.

[6.2.6] Furthermore, this interpretation of Article 26 RDR and the Board’s opinion concerning what kind of procedural steps is suitable for causing an interruption of the period of limitation is consistent with the respective legal concepts in Contracting States of the EPC, particularly in Germany and France.

§ 78c(1) German Criminal Code (“Strafgesetzbuch”) contains a list of procedural measures leading to an interruption of the period of limitation. All these provide for either a direct involvement of the accused or a formal decision taken by a judge or public prosecutor. This (high) standard applies in principle to periods of limitations for regulatory offences according to § 33(1) German Regulatory Offences Act (“Gesetz über Ordnungswidrigkeiten”) and for disciplinary proceedings against lawyers pursuant to § 115(1) German Federal Lawyers’ Act (“Bundesrechtsanwaltsordnung”).

A similar concept is known in the French law (cf. Article 7 Code de procédure pénale), according to which only an official investigation or prosecution step might trigger an interruption of the period of limitation.

[6.3] According to the facts as presented in the file, the complaint was (finally) received by the registrar of the epi DC on 2 April 2009. However, concerning the subsequent proceedings before the DC the facts available to the Disciplinary Board of Appeal show only that the complaint was forwarded to the chairman and the secretary of the DC by internal letter on the same day and by external letter to the President of the epi and the EPO as well as to the members of the chamber on 9 September 2009.

The letter of 2 April 2009, as a mere internal action and like other internal arrangement (e.g. registration of the notice of complaint in the database, allocation of a case etc.), could not and did not interrupt the period of limitation according to Article 26(2) RDR.

The external letter of 9 September 2009, however, came too late to interrupt the period of limitation that, by then, had already expired.

By communication of 16 May 2011 issued by the rapporteur of the Disciplinary Board of Appeal, the secretariat of the DC was invited to submit a copy of the complete file of the DC in case CD 3/09 with documents and information about what the DC, its chairman, rapporteur, secretary and/or registrar initiated, prepared, inquired or decided between 2 April 2009 and 9 September 2009. However, no reply and no copy of the file were submitted.

The Appellant’s remark that there would be no evidence of receipt of this communication at the secretariat and the office of the DC chairman is inexplicable for the Board because the communication had been sent by facsimile with a confirming transmission report and by post, and the rapporteur had called the epi office and was told that no reply to the communication would be sent. Apart from this, the communication was sent by the Board’s registrar by e-mail on 20 September 2011 upon a respective request from the Appellant and its receipt was confirmed by the Appellant by e-mail on 22 September 2011, but the Appellant’s letter of 6 October 2011 contained nothing pertaining to the Board’s request.

With no further information available, the Disciplinary Board of Appeal has to take its decision according to the state of the file as submitted at the beginning of the proceedings before the Board with the additional submissions by the Appellant in these proceedings. This information shows that the DC only took internal procedural arrangements before 9 September 2009 when, for the first time but too late for triggering an interruption of the period of limitation, letters according to Article 7(4) lit. b) RPDC were sent.

[6.4] The Appellant referred in its letter of 6 October 2011 to an earlier complaint against the Defendant, filed on 21 February 2008 (case CD 1/08). This complaint was referred to in the (new) complaint dated 2 April 2009. However, there the complainant noted that the earlier complaint would have been considered withdrawn by the DC. No further information as to its content and, in particular, as to the proceedings in respect of that earlier complaint is on file.

Contrary to the assumption by the Appellant, the Disciplinary Board of Appeal has no copy of the earlier complaint nor does it have the letter from the epi registrar to both the chairman and secretaries of the DC. Again, regardless of the rapporteur’s communication of 16 May 2011, the secretariat of the DC submitted no additional information in this respect.

In respect of the Appellant’s submission that the filing of that earlier complaint on 21 February 2008 led to an interruption of the period of limitation pursuant to Article 26(2) RDR, the Board refers to the preceding paragraphs. The mere receipt of the complaint and its registration according to Article 7(4) lit. a) RPDC could not constitute an interruption.

The same is true with regard to any letter sent by the registrar on 7 March 2008 to the chairman and secretary of the DC allocating the complaint to the DC chamber (Article 7(4) lit. b), 1st part RPDC). Such a letter was also of a purely internal nature and not comparable to an official notification sent to the President of epi and the President of the EPO according to Article 7(4) lit. b), 2nd part RPDC or to a notification of the Chairman of the Disciplinary Board of the EPO according to Article 7(4) lit. c) RPDC).

[6.5] The Board has no explanation why the proceedings before the DC were delayed and, in particular, why the registrar did not follow the procedural steps foreseen in Article 7(4) RPDC immediately upon receiving the complaint on 2 April 2009 that would have included procedural steps being taken against the Defendant noticeable to third parties, i.e. the President of the epi and the President of the EPO, and that would have interrupted the period of limitation.

Further, the Board cannot understand why the file of the DC in this case, a copy of which was submitted to the Board, does not contain any information or documents about when and how the procedure pursuant to Articles 8 and 18 RPDC was followed.

[6.6] Since there is no other cause or reason apparent for an interruption of the period of limitation according to Article 26(2) RDR the fragmentary facts submitted by the Appellant and the DC on file show that the period of limitation clearly ended long before a procedural step according to Article 26(2) RDR was taken that might have led to an interruption of the period of limitation. […]

The appeal is dismissed.

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