Thursday, 13 June 2013

T 555/08 – Things Assistants Can’t Do

“Cathy, I want you to write me an inspiring, dynamic 
speech that bears my unmistakable stamp of genius.”

In this examination appeal case Board 3.5.05 had to decide on a request for re-establishment into the time limit for paying the renewal fee for the 13th year (1420 ) which had fallen due during pending appeal proceedings.

The applicant, who was not represented, had entrusted the administrative matters related to his patent applications to Mrs Elke Z., the manager of the company that commercialised his inventions.

Mrs Z. intended to pay the renewal fee (which fell due on March 31, 2011) on January 31, 2011, and had her bank manager fill in a form transferring 850 from her private account to the EPO (she had found in the booklet ‘National Law relating to the EPC’ that 850 € was the amount to be paid for Germany). However, the bank manager had filled in the form such that the money was transferred to the business account of her company, possibly because he thought that the transfer to the EPO would then be made from the business account. Mrs Z. thought that the money had been transferred to the EPO and did not take any further steps.

When the applicant received the communication that the fee had not been paid, he called Mrs Z., who confirmed that the payment had indeed been made. He was satisfied with this information and did not take any further steps; he only realised that something had gone wrong when he received the notification of loss of rights.

Unsurprisingly, the Board did not grant re-establishment. The decision is interesting because it applies the extensive case law on assistants of patent attorneys to assistants of unrepresented inventors.

*** Translation of the German original ***

[3.1] Against the background of the factual situation that has been presented in the course of the written proceedings and discussed in detail during the oral proceedings, it has to be decided, in application of A 122(1), whether the applicant/appellant has missed the time limit for paying the renewal fee for the 13th year “in spite of all due care required by the circumstances having been taken”.

[3.2] According to the wording of this provision and the established case law of the Boards of appeal a request for re-establishment can only be granted if the requesting party was unable to observe the time limit in spite of all due care required by the circumstances having been taken. For the purposes of A 122(1) the circumstances of the individual case have to be considered in their entirety. The duty of due care has to be assessed in the light of the situation as it was before the expiration of the time limit. “All due care” means the standard of care that the notional reasonably competent applicant or appellant, respectively, would have employed under the relevant circumstances (cf. T 30/90 [3]).

[3.3] When the applicant is not represented by a professional representative during the entire examination proceedings and is sole responsible for the payment of renewal fees, lower standards for the duty of due care are indeed to be applied, but there still is a duty of due care regarding the proceedings. Such an applicant, who does not use the services of a professional representative, has to be prepared, within the limits of his possibilities, to carry out the acts required in the course of the grant proceedings in a regular manner and in due time. He cannot as a rule (generell) invoke his ignorance of the law nor may he refrain from taking reasonable (zumutbar) measures for keeping time limits (J 5/94 [3.1]; J 15/08 [3.2.1]; J 8/09 [4.2]).

[3.4] A system for monitoring pending time limits is part of the reasonable measures for keeping time limits. It is irrelevant in this context whether this system is on paper or electronic (e.g. by means of special software or an Excel sheet) (cf. T 1962/08 [5.2.4(a)]).

[3.5] According to the established case law of the Boards of appeal due care regarding missed time limits is considered to have been taken when the failure to keep the time limit was caused either by extraordinary circumstances such as e.g. illness (no such circumstances have been invoked in the present case) or resulted from an “isolated mistake within an otherwise satisfactory system” (cf. J 2/86 [headnote; 4])

[3.6] In the present case the appellant has entrusted the payment of the renewal fees and the remaining administrative work related to the patent application to his business partner, Mrs Z. An applicant or a representative is not required to carry out all the actions he has to perform vis-à-vis the EPO himself. If an applicant or representative entrusts such actions to an assistant (Hilfsperson) he will not be held accountable for a failure of this assistant only if he himself has complied with a set of particular requirements. He must have carefully chosen the assistant, instructed him/her properly in view of the tasks to be performed and must have exercised reasonable supervision of his/her work (J 16/82 [5]). The expression “assistant” within the meaning of the case law does not refer to the hierarchical position of this person with respect to the applicant or representative but only to the fact that this person carries out certain tasks for the applicant or representative in the context of actions to be performed vis-à-vis the EPO. Thus, as far as the failure to meet the time limit is concerned, Mrs Z. is to be considered as an assistant. When assistants are used, the duty of due care primarily concerns the applicant unless a professional representative acts in his name. When the assistant makes a mistake, it has to be examined whether this mistake is due to insufficient selection, instruction and/or supervision by the applicant.

[3.7] In view of the monitoring of the time limits for paying renewal fees the Board notes that the applicant did not monitor time limits over the relevant period. He had entrusted this task to Mrs Z., to whom he had given a list in 2007 or 2008. This list inter alia indicated the filing date and the dates on which fees had been paid for each patent application; it did not indicate the amounts to be paid or the due dates of the fees to be paid in the future […]. The appellant has not claimed that these due dates or time limits had been documented or monitored in another way.

[3.8] The Board is of the opinion that it is questionable whether the monitoring of time limits as a whole can be entrusted to an assistant without there being a violation of the duty of due care, but this question may remain unanswered. In any case the duty of due care can only be said to have been complied with if the chosen assistant is sufficiently qualified in view of this task and when it is certain that he/she disposes of any information needed for reliably keeping the time limit.

[3.9] Based on the list she had received, Mrs Z. could only have ensured reliable monitoring of the time limits and payment of fees if she had known the relevant provisions of the EPC and the RRF and extracted the missing pieces of information from the European Patent Register. Although Mrs Z. had already correctly performed other duties regarding patent applications of the appellant, he could not rely on the fact that his business partner was sufficiently qualified for retrieving herself the required pieces of information regarding the amounts and due dates of future renewal fees. He would have had to give these pieces of information – which the applicant is expected to know (see above, point [3.3]) – in appropriate form to Mrs Z. The fact that this was not done means that Mrs Z. acting as an assistant was not sufficiently familiar or instructed with her task.

[3.10] As the entire correspondence of the EPO was sent to the appellant, he would have had to ensure that it was systematically and as soon as possible transferred to Mrs Z. Arranging for the incoming mail to be transferred does not constitute an unacceptable (unzumutbar) technical or economic problem, even for an individual applicant who is not represented (cf. J 27/01 [3.3.2]). A mere sporadic and personal transmission of incoming correspondence […] does not allow an assistant to establish a uniform and updated filing system (Ablage). However, such a filing system would be necessary for having an overview over actions that have been carried out and actions that are to be performed in the future. Thus the omission to systematically and rapidly transmit the correspondence constitutes a further lack of instruction of the assistant.

[3.11] The fact that the communication dated May 4, 2011, concerning the renewal fee for the 13th year was not transmitted to Mrs Z. right away […] was not an isolated mistake but corresponded to the usual practice. The communication inter alia contained the indication of the amount of the renewal fee (1420 ) and the additional fee to be paid in case of late payment (710 ). If she had disposed of the communication, Mrs Z. could easily have seen that the amount she thought she had transferred to the EPO (850 […]) was not sufficient and that it was at least necessary to clarify the situation. She might have contacted the competent formalities agent of the EPO by phone, because the number was mentioned on the communication of May 4, 2011. Thus the loss of rights could very likely have been avoided had the assistant been instructed completely and in due time, including timely transmission of the communication of May 4, 2011.

[3.12] Once he had received the communication of May 4, 2011, the appellant asked Mrs Z. on the status of the payment of the renewal fees. When she explained that the corresponding renewal fee had been paid, he did not take any further steps until he received the communication of loss of rights […]. In particular, he did not enquire at the EPO.

[3.13] The appellant was satisfied with Mrs Z.’s explanation on the phone that contradicted the contents of the communication of May 4, 2011, which he had before his eyes. In particular, the communication indicated that the renewal fee of 1420 had not been paid on the due date of March 31, 2011, and that a loss of rights could still be avoided by a payment of 2130 until the expiry of the sixth month after the due date. He could have quickly established that there had not been a correct payment by asking [Mrs Z.] questions on the transfer and the transferred amount.

[3.14] In a situation where oral assertions of an assistant are uncritically accepted as correct although there must have been doubts regarding this assertion, the standard of due care required in view of A 122(1) has not been complied with (cf. T 602/94 [3]). The omission to question or to check, respectively, has to be seen in the context of the requirement to supervise assistants. In particular when there are signs for a possible mistake, it would have to be checked whether the assistant carries out the duties entrusted to him/her correctly.  The appellant could have been expected to check, and indeed should have checked Mrs Z.’s assertion (e.g. by calling the number given on the communication).

[3.15] Even if the Board assumes in favour of the appellant that he was entitled to entrust all actions regarding the payment of renewal fees (including the monitoring of time limits) to Mrs Z. acting as an assistant, without violating the duty of due care resulting from A 122(1), the duty of due care was violated by the way in which Mrs Z. was used. She was not sufficiently instructed so as to be able to carry out her task (points [3.9] to [3.11]) and once the communication of the EPO regarding the failure to pay the renewal fee had been received, she was not sufficiently supervised (points [3.12] to [3.14] above).

[3.16] The fact that the transfer ordered by Mrs Z. had been made to her business account and not to the EPO […] is irrelevant under these circumstances. If the 850 had reached the EPO, the communication of May 4, 2011, would still have been sent and the loss of rights would have occurred in the same way. The fact that only 850 € (instead of the required renewal fee of 1420 €) had been transferred is due to the fact that the appellant had insufficiently instructed Mrs Z.

[3.17] Thus the Board comes to the conclusion that the appellant has not exercised all due care required by the circumstances in dealing with the payment of the renewal fee. Consequently, the requirements of A 122(1) have not been satisfied and the request for re-establishment cannot be allowed.

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

The file wrapper can be found here.