Registered forms of Intellectual Property are typically associated with a variety of deadlines, both before and after registration. Missing any of these may have catastrophic results for the registration. Many systems therefore have a restoration procedure that may mitigate these effects, subject to certain conditions. In a great number of systems the most important condition is that an appropriate level of care was taken to observe the original deadline, an assessment of so-called “due care”.
It is therefore important to ensure that appropriate care is taken in relation to the multitude of deadlines associated with any Intellectual Property portfolio, firstly in order to minimise the risk of any of those deadlines being missed and secondly in order to improve the chances of recovering any rights that are lost as a result of the deadlines being missed. Accordingly, an understanding of restoration requirements is useful for determining the appropriate level of care to be taken. This paper explores the question of what level constitutes “due care”.
Over the last 8 years, I have had considerable experience in fixing a wide range of clients’ problems, most commonly by using restoration procedures in order to recover lost rights where a deadline has been missed. This may range from the relatively common problem of a missed renewal fee payment to the more recently recoverable error of a missed Paris Convention deadline for filing a new application. Sometimes clients approach me with the expectation that it will be a straightforward procedural matter to recover their rights and are surprised, sometimes even alarmed, when they realise that it will be necessary to prove the level of care they have taken in respect of their Intellectual Property deadlines and/or that it is commonly necessary to prove the care taken by all parties involved. Other clients approach with the belief that their case for having taken “due care” is hopeless and are pleasantly surprised when they see how an argument may be framed, with appropriate care taken to present it in the best possible light, to show that the requisite level of care had indeed been taken. In all such cases, it is essential to understand in depth the level of care that is required.
The requirements for restoration vary greatly. However, at the European Patent Office, restoration is provided by re-establishment of rights under Article 122 EPC. The requirements of this provision are shared with a number of restoration systems worldwide, although with much variation. Accordingly, it is a useful starting point for reviewing the level of care required in order to obtain restoration.
Re-establishment of rights provides the ultimate remedy for missing just about every deadline that you may face when dealing with the European Patent Office. It is applicable both to procedures relating to patent applications and procedures relating to granted patents. It is applicable to the missing of any deadline which directly results in any loss of rights, namely not just deadlines resulting in the loss of a patent or patent application in its entirety. The only deadline for which it does not provide the ultimate remedy is the deadline for requesting re-establishment of rights itself, in order that this deadline is final.
Re-establishment of rights is therefore explicitly available for, and commonly used in respect of, renewal fee payments beyond the end of the six month grace period. It is also now available for re-establishing a claim to priority where the application claiming priority was not filed within the one year period set by Article 87(1) EPC. Furthermore, re-establishment of rights is available as the last resort for missing the deadline for bringing an International application under the Patent Cooperation Treaty (namely a PCT application), into the European Regional Phase.
It is important to remember, however, that re-establishment of rights is only available in respect of missed deadlines. It may be too late to take a particular action without having missed a deadline. The classic example is the filing of a divisional application. One may only file a divisional application based on a pending application. Therefore, a time constraint may be imposed on the filing of a divisional application, for example before a pending application is deemed withdrawn, finally refused or granted. However, such a time constraint is not a deadline per se. Accordingly, it is not possible to request re-establishment of rights if you miss the opportunity to file the divisional application because the parent application ceases to remain pending. This may be contrasted with Rule 36(1)(a) EPC, which does establish a true deadline for filing divisional applications and may therefore be the subject of a request for re-establishment of rights if missed.
A further area for caution relates to the interaction between the provisions for Further Processing, provided by Article 121 EPC with the provision for providing re- establishment of rights under Article 122 EPC. Specifically, Rule 136(3) EPC specifies that re-establishment of rights is not available in respect of a deadline for which Further Processing is available. Further Processing provides the straightforward procedural remedy for missing many European Patent Office deadlines, in which the missing of the initial deadline is deemed not to have occurred on payment of the requisite fee and completion of the omitted act.
However, this does not mean that re-establishment of rights is not available as the ultimate remedy for such missed deadlines. This is because the deadline for requesting Further Processing itself may be made the subject of a request for re- establishment of rights. Therefore, the effect of Rule 136(3) EPC is that one cannot directly request re-establishment of rights in respect of such deadlines but must do so by the route of requesting re-establishment of rights in respect of the Further Processing deadline and simultaneously using the Further Processing provisions of Article 121 EPC in order to respond to the original deadline.
In practice, this means that, in addition to preparing a case for re-establishment of rights, completing the original omitted act and making payment of the fee for requesting re-establishment of rights, one must also pay the appropriate Further Processing fee that would have been due had the originally missed deadline been remedied using Further Processing alone. This may include 50% of any originally unpaid fees.
Making an error in respect of this apparently minor procedural issue is potentially catastrophic. If the additional request for Further Processing is not included by payment of its requisite fee, such that the submissions are in effect a request for re- establishment of rights in respect of the originally missed deadline, the European Patent Office will consider the request inadmissible. Such an error may usually only be discovered after the deadline for requesting re-establishment of rights under Article 122 EPC. Accordingly, it will no longer be possible to correct the submissions or re-submit them. Consequently, it will no longer be possible to take any action to recover the rights lost caused by the originally missed deadline. Sadly, I have seen cases where generally experienced attorneys, but who are inexperienced in restoration procedures, have made this error and it has been too late to fix it.
This is perhaps a useful reminder that, although one may identify an appropriate “normal” level of care to be taken in respect of Intellectual Property deadlines, when dealing with a restoration procedure, one is already at the last resort. Accordingly, there is no safety net and all possible care must be taken.
Article 122(1) EPC specifies that the European Patent Office shall re-establish rights if the applicant or proprietor can demonstrate that they were unable to observe the missed time limit “in spite of all due care required by the circumstances having been taken”.
The key requirement, therefore, is to prove that “due care” was taken. It is important also to note the qualification “required by the circumstances”. This means that there is not a single absolute test. In practice, therefore, the quantum of care required in order to obtain re-establishment of rights will vary from situation to situation. This will be developed further in this paper below.
Rule 136(1) EPC specifies the deadline for requesting re-establishment of rights. In most cases, the deadline is the earlier of two months from the so-called “removal of the cause of non-compliance” and one year from the expiry of the unobserved time limit.
Regarding the first part of the deadline calculation, the removal of the cause of non- compliance is commonly, but not always, the date on which it is discovered that a deadline has been missed (in which case the cause of non-compliance was an error which resulted in the relevant person being unaware of the original deadline). In rarer cases, the deadline may have been missed for some other reason, in which case the two month term is initiated as soon as this other reason ceases to exist.
Two important consequences should be appreciated. Firstly, the discovery of an error may start the clock running. It is important, therefore, to take immediate action and, where necessary, seek appropriate assistance. Secondly, the actual deadline may only be determined once all the facts of the case are known and may be open to argument.
Therefore, any application for re-establishment of rights at the European Patent Office should not be delayed to the last minute for fear that the European Patent Office disagrees with your assessment of the date on which the cause of non- compliance was removed. Furthermore, it is essential to investigate quickly the circumstances surrounding the discovery of the error (as well as the circumstances surrounding the cause of the original error, namely the missing of the original deadline) in order that one can determine a provisional view of the deadline for filing the application for re-establishment of rights.
Regarding the second part of the due date calculation, it is important to remember that the one year period runs from the expiry of the time limit that is the subject of the request for re-establishment of rights and not necessarily from the originally missed deadline. For example, if the originally missed deadline is one that can be remedied by using Further Processing (Article 121 EPC), such that the request for re- establishment of rights is formally in respect of the unobserved Further Processing time limit, the one year period runs from the Further Processing deadline rather than the original deadline. This may be significantly later.
This is especially the case because the Further Processing deadline is set by the date of notification from the European Patent Office that the original deadline was missed. In particular in respect of such notifications concerning the late entry into the European Regional Phase of a PCT application, such notifications can become lost and/or may be returned to the European Patent Office (not least because the European Patent Office sends them to the applicant rather than their agent). Consequently, actual notification of the loss of rights resulting from the originally missed deadline may take months (I have seen cases of over a year), resulting in a correspondingly deferred Further Processing deadline and consequently a greatly deferred deadline for requesting re-establishment of rights.
In order to submit an application for re-establishment of rights at the European Patent Office, it is necessary to pay the official fee for requesting re-establishment of rights, request re-establishment of rights, provide the grounds justifying the re- establishment of rights and complete the omitted act that should have been performed before the deadline that is the subject of the request for re- establishment of rights.
The above requirements are essentially straightforward but great care is required, particularly if you are handling a restoration because you made an error yourself (in which case it is likely that you do not have much experience of the restoration procedure). There are several pitfalls awaiting an attorney that has not previously had experience of restoration procedures.
At all times it must be remembered that there is no remedy for making an error in a restoration case - this is already the last chance to save an Intellectual Property right. Accordingly, even an apparently minor error could be fatal. For example, missing the deadline by even one day is a non-recoverable error (made more difficult, as discussed above, by the fact that the determination of the deadline may not be clear-cut). Similarly, missing a required fee payment, which may be part of the action necessary to complete the omitted act, will be a non-recoverable error. Even a typographical error could prove to be non-recoverable, for example if as a result one requested re-establishment of rights in respect of the wrong application and the correct application number were not apparent from the contents of the other papers submitted.
As discussed above, another classic pitfall is to request re-establishment of rights in respect of the wrong deadline, such as requesting re-establishment of rights in respect of the originally missed deadline rather than the deadline for Further Processing.
Even if one makes a recoverable error in the request for re-establishment of rights, it may be extremely damaging to your case in an indirect manner. Central to the judgement regarding whether or not to permit re-establishment of rights is an assessment regarding whether or not due care has been taken. If a further error is made in requesting re-establishment of rights, it may put into the mind of the Examiner at the European Patent Office that not enough care is being taken. Therefore, it is of paramount importance that extreme care is taken when preparing and filing the request for re-establishment of rights.
Considerable care and thought must also be taken when preparing the contents of the grounds for re-establishment of rights. Although as presented in this case, it is important to take the appropriate due care in respect of deadlines, not only to avoid missing them but also to put oneself in a position that gives you a strong chance of obtaining re-establishment of rights in the event that a deadline is missed, when something does go wrong and a request for re-establishment of rights is required in practice, the presentation of the grounds can become the most important factor in determining whether or not one is successful.
Essentially, a successful request for re-establishment of rights must tell a good story. The grounds must convey to the Examiner the system in place that should have resulted in the missed deadline being met and should show that this system was appropriate. Secondly, the grounds should explain to the Examiner why the system failed in this particular case and, crucially, why this failure should be considered as an isolated failure that should not have been anticipated and/or that it was reasonable that the system was not sufficiently robust that it could deal with an unexpected eventuality.
Within a given set of facts, there will be a variety of ways of presenting the circumstances that should be considered in order to put forward the strongest case. Furthermore, it is invariably true that relevant parties will not initially provide all of the information that could be relevant. It is therefore almost always necessary, having considered the initial explanation of events, to investigate further.
In practice, I have found that the cases that are brought to me that initially appear to be the most hopeless tend to be the cases that have very relevant information not initially provided. For example, a case initially presented as being caused by a glaring error by an individual, such as a total failure to respond to a perfectly adequate reminder system, may suddenly have its chances vastly increased when it is discovered that the individual involved was at the time suffering from a series of traumatic events occurring in their life outside of work and that a further individual, who should have been supervising their work, suffered at the same time from some significant medical illness.
Clearly, the investigation of the case and the preparation of the grounds for re- establishment of rights is a time consuming business if it is to be done properly. Nonetheless, it also must be performed swiftly. This is because the full grounds for re-establishment of rights must be presented within the deadline for requesting re- establishment of rights. The consequences for not preparing the full case within the deadline were recently clearly shown in J15/10. In that case, the grounds for re- establishment of rights were not substantiated within the deadline for requesting re- establishment of rights and, accordingly, the request was deemed inadmissible.
It is also very important that the grounds for re-establishment of rights are supported by appropriate evidence. In general, contemporaneous evidence, such as copies of correspondence, file notes and minutes of meetings from the relevant period will be required. A case based solely on sworn statements prepared after the deadline was missed, such as may be sufficient in the US, will not usually be successful before the European Patent Office.
After the deadline for requesting re-establishment of rights, it is permissible to provide additional information to support the request and, in particular, it is permissible to provide additional evidence that supports the case previously filed. However, any such supplemental information or evidence should support the originally filed request rather than being in effect a different ground for justifying re-establishment of rights. It is therefore important that the full facts of the case are known before the request for re-establishment of rights is filed.
As explained above, the central issue in any grounds for re-establishment of rights is the demonstration that due care was taken. The grounds will therefore normally include a detailed explanation of the system in place for handling the deadline that was, in the event, missed.
Case law of the Boards of Appeal at the European Patent Office makes clear that due care has to be assessed taking into account all of the circumstances. It is therefore useful in practice for the grounds for re-establishment of rights to describe not only the part of the system that failed but also parts of the system that were successful. This may demonstrate that overall due care was taken, even though one part of the system failed. Part of the skill in presenting the restoration case is to ensure that the detailed description of the parts of the system that did not fail appears relevant as part of the description of the failure of the system rather than a mere attempt to distract the Examiner from the failings of the system that was in place.
As a matter of practice, one must also consider carefully the extent to which one can strengthen a case by careful selection of the facts to present in order to avoid questions being raised that may be difficult to answer. For example, if a plurality of reminders to an attorney are provided by a system, it may be preferable only to identify the existence of a subset of these in the grounds for re-establishment of rights. This subset may be sufficient to demonstrate due care in a general sense and it may be that, if the Examiner were aware of one of the unmentioned reminders, he may ask the question “why did that reminder not cause the error to have been discovered and the original deadline to be met?”, which may be a very difficult question to answer.
In considering whether a system is one that constitutes due care, whether when reviewing one’s system with a view to minimising the risk of missing deadlines or when preparing a case to attempt to prove that due care was taken, several key issues must be considered, as discussed below.
A first issue relating to due care is the issue of when the requisite care was taken.
Essentially, the answer is that the question of whether or not due care was taken is assessed for the period of time up to the deadline that was missed (which may correctly be the Further Processing deadline rather than the originally missed deadline). The period will extend back as far back as is relevant.
To take the example of a missed renewal fee payment, due care will be considered for the period leading up to the original deadline for paying the renewal fee as well as during the grace period for late payment of the renewal fee with a fine.
Due care will also need to be considered around the period when the actual error occurred that resulted in the deadline being missed. For example, if the renewal fee was not paid due to incorrect entry of the case into a record system, due care at that time will be considered, regardless of how long before the lapse that error took place. In general, one would not expect the level of care taken when paying the preceding year’s renewal fees to be relevant. However, it may be helpful for establishing a pattern of due care and, or course, if in the preceding years payments had successfully been made despite little care having been taken, one would generally be advised not to mention it.
Actions that take place after the relevant deadline was missed, namely once the only remedy was the request for re-establishment of rights, will not strictly speaking be taken into account for the consideration of whether or not due care was taken. In some case, some such information may be mentioned in order to maintain the overall impression of due care being taken. On the other hand, the practice of explaining how a system has been improved in the light of the discovery of the error (which appears to be more common practice in the US) is potentially dangerous. In particular, it may serve to highlight to the Examiner how the system should have been set up in the first place.
Although demonstration of care being taken after the relevant deadline may not affect the assessment of the due care criterion, it may become very important to the assessment of whether or not the request for re-establishment of rights was timely filed.
In J12/10, for example, the Board of Appeal held that “the date of the removal of the cause of non-compliance is the date on which the European representative, taking all due care, would have noticed that the time limit had inadvertently been missed”. In that particular case, the Board of Appeal effectively considered that the European representative had not taken sufficient care to react to a Communication from the European Patent Office noting that a loss of rights had occured, rejecting the contention that the cause of non-compliance was only removed once that loss of rights Communication was subsequently received by the applicant or their US attorney. Consequently, the request for re-establishment of rights was deemed to have been filed too late and was therefore inadmissible.
J12/10 also highlights one of the classic pitfalls discussed above for attorneys that are not familiar with restoration cases. The initially filed request for re- establishment of rights apparently made clear the European representative’s mistaken belief that the 10 day arrangement of Rule 126(2) EPC applies when calculating the deadline for requesting re-establishment of rights. It does not. Making such an error of the law would not have assisted in presenting an argument for due care having been taken, even had the error not resulted in the case being filed too late to be admissible.
A second issue in any due care consideration is the issue of who took due care.
In the first place, it is the responsibility of the patent applicant, or patent proprietor where applicable, to demonstrate having taken due care.
As a matter of practicality, in many cases the burden of proof that the applicant or proprietor took due care can be largely discharged by the delegation of the applicant or proprietor of the responsibility for monitoring the requisite deadlines and taking the subsequent actions in a timely fashion to an appropriate party, such as a European representative or a firm of European representatives, either directly or by way of an intermediary, such as a local attorney in the case of an applicant or proprietor not based in an EPC contracting state. Proving due care of the applicant or proprietor in that case largely then becomes a case of demonstrating that their selection of the European representative and/or intermediary was appropriate and proving that the applicant or proprietor was responsive, in particular to requests for instructions as and when required.
From the outset, the case law of the Boards of Appeal of the European Patent Office has made clear that it is also essential to demonstrate that due care was taken by the European representative. It is therefore not enough to say that the applicant or proprietor exercised their due care by appointing a highly respected European representative, who regrettably made an uncharacteristic error.
If the European representative cannot satisfy the European Patent Office that they themselves took due care, the applicant or proprietor will be punished for the error of the European representative. This may appear to be harsh. However, it is intended to ensure that European representatives do take appropriate steps to avoid missing deadlines. In turn, this should reduce the number of cases that lapse and are then restored, which is desirable due to the uncertainty that it creates for third parties.
Such is the theory. I am unconvinced personally that this additional sanction is necessary in reality. In general, I believe that European Patent Attorneys, in private practice or in-house, would take due care of the deadlines for which they are responsible, even if it were not a requirement to recover a case where a deadline were missed. This is simply because missing too many deadlines is bad for business or for career prospects, even if you subsequently remedy the loss. This is borne out by my experience of restoration work in respect of UK patents. Several years ago the requirement to obtain restoration in the UK was downgraded from proving that the patent proprietor had taken due care to meet renewal fee deadlines in respect of their patent to proving that the non-payment of the renewal fee was unintentional. Based entirely on my personal restoration practice, namely anecdotal evidence, there does not appear to have been a significant increase in the number of UK restoration applications. In other words, patent proprietors do not appear to be taking less care simply because they would no longer need to prove due care if they accidentally allow one of their patents to lapse.
The position of the European representative in relation to re-establishment of rights requests relating to unpaid renewal fees is often made less clear by the involvement of an annuities agency.
It is conventional practice these days for the monitoring of renewal fee deadlines and the payment of renewal fees to be handled by a dedicated annuities agency. This may be essentially an outsourcing of this function by the European representative and/or may be at the request of the applicant/proprietor. The latter may do so in order to have all of their various Intellectual Property rights for all the different jurisdictions around the world handled by a single annuities agency, rather than needing to deal with multiple different attorneys in different countries. This practice, I believe, improves the care of the monitoring of these deadlines. Annuities agencies are dedicated solely to this function and are therefore extremely effective in most cases in accurately monitoring deadlines, suitably reminding applicant/proprietors of upcoming deadlines and timely paying fees when instructed.
However, European representatives involved in such situations must remember that they remain the European representative for a European patent application. Accordingly, they should not see themselves as having entirely delegated all responsibility for maintenance fee deadlines for the European patent application, even though an annuities agency may be responsible for monitoring the payment deadline and making the necessary payment (examples of cases in which the Boards of Appeal of the European Patent Office have made this explicit are J27/90 and J12/10).
A consequence of the European representative remaining responsible for all aspects of a European application, regardless of whether responsibility for renewal fee payment has been delegated to an annuities agency, can be found by considering the reminder, provided by the European Patent Office when a maintenance fee is initially not paid but while the fee may still be paid within the six month grace period. This reminder is sent to the European representative and in any request for re-establishment of rights relating to an unpaid renewal fee, it will be necessary to explain to the European Patent Office the fate of this reminder. European representatives therefore should have an appropriate system for handling these reminders if they are to demonstrate that they have taken due care, regardless of whether or not an annuities agency is used. The European Patent Office would expect to see a system for ensuring that these reminders are forwarded to the applicant and for monitoring for an appropriate response. It should be emphasised that, while the case law of the Boards of Appeal makes it clear that an appropriate system should not rely on the receipt of such reminders from the European Patent Office (for example as the only prompt to pay the renewal fee), it remains necessary for an effective system to have an appropriate component for reacting to the receipt of these reminders.
Although the European representative is not permitted to delegate their responsibility for all of the deadlines of a European applicant or patent, the case law of the Boards of Appeal does recognise that it is appropriate for a European representative to delegate certain tasks in respect of the processing of their work. Accordingly, it is expected that a European representative may delegate tasks to an assistant. Under certain conditions, if the assistant makes an error that leads to the deadline being missed, it may not result in a finding that the European representative did not taken due care.
J5/80 succinctly defined the requirements that must be met in delegating responsibilities to an assistant, if their subsequent error is to be excused. In particular, the assistant should be appropriately selected for the tasks to be performed, should be properly instructed in the tasks to be performed and the European representative should exercise reasonable supervision over the work. This seems fair.
The European representative may therefore delegate certain routine tasks to an assistant, such as a secretary or a clerk, provided that they take appropriate care to select those who are capable of performing the tasks, namely are appropriately trained and/or experienced, and provided that they ensure that the task to be performed is appropriately defined and monitored. However, it is not considered appropriate if the assistant is required to work in such an autonomous fashion or has responsibilities that are more than routine tasks (such as requiring an interpretation of the correct law) that they are, in effect, performing the function of an attorney.
Provided the above conditions are met, the Boards of Appeal of the European Patent Office have proven themselves to be sympathetic to excusing the human error that may occur in the work of an assistant. In the UK, this was previously known (under the old due care regime) under the maxim the master should not suffer for the sins of the servant. Of course, in the UK this was taken to mean that the patentee should not suffer for the error of their appointed patent agent, whereas the Boards of Appeal at the European Patent Office do not consider an error by the European representative to be justification for re-establishment of rights unless the European representative can demonstrate that the representative took due care. Furthermore T439/06 should raise a note of caution. In that case, an assistant of the European representative erred in calculating the 10 day rule, resulting in the erroneous entry into a docketing system of the deadline for filing an appeal. Subsequently, the appeal was filed late. The Board of Appeal in that case accepted that the error by the assistant should be excused. However, they subsequently found that due care overall had not been taken by the European representative. This was because, although in the circumstances it was reasonable to rely upon an assistant to determine the deadline and enter it into the docketing system in order to provide appropriate reminders to the European representative, it was not appropriate for the European representative subsequently to rely on the due date calculated by the assistant without for themselves checking the calculation of the due date.
It is not just the applicant, proprietor and the European representative that must prove that they took due care. This burden also passes to other parties that represent the applicant, even if they are not the formal European representative. Thus, it may be necessary to prove the due care of the annuities agency and the due care of any intermediary acting between the applicant/proprietor and the European representative such as a local attorney, for example a US patent attorney representing a US applicant (see, for example J3/88).
An important adjunct to the requirement of care being applicable to all responsible parties is that the Boards of Appeal at the European Patent Office do not consider any mistake in knowledge of the law to be a justification for re-establishment of rights. Essentially, for due care to be considered to have been taken, it is essential that one either knows and understands the law correctly or seeks help from one that does. This applies to all parties. Therefore, an error resulting from erroneous understanding of the law at the European Patent Office by a US attorney or their assistant (who, as with the assistant of the European representative, should be appropriately selected, instructed and supervised), will be considered to be negligent, and therefore be seen as an indication of a lack of due care.
Demonstrable negligence by any party in any way responsible for the application or patent will usually be fatal to a request for re-establishment of rights as it clearly shows a lack of due care. The seemingly one exception is that the European Patent Office may excuse the otherwise negligent actions of a party if it can be proven that the negligence of the party resulted from a medical condition, for example mental illness.
The burden of proof required is relatively high for the European Patent Office to be prepared to excuse a negligent act on this ground. However, as can be seen from J2/98, the requirement is lower than that required to obtain an interruption of proceedings (an alternative but rare remedy for missing a deadline) on the grounds that the European representative was legally incapacitated. In that case, the evidence was not sufficient to prove that the European representative was “totally or nearly totally unable to take rational decisions related to his professional duties” precluding an interruption of proceedings. However, the same evidence was considered to be sufficient to show that the European representative was not “capable to run properly some of the cases under his responsibility” and on that basis re-establishment of rights was permitted.
My personal experience of obtaining re-establishment of rights on the grounds of excusing an apparently negligent act by one of the parties on medical grounds is that it can be very difficult in practice. This is because evidence is required to satisfy the European Patent Office. However, in the case where a mental illness has, or apparently has, resulted in negligent behaviour, the individual involved may not cooperate to provide the necessary evidence. This may occur for example either if the negligence (or alleged negligence) is the subject of litigation or because the individual may be in denial. The latter may occur due to their fears for the effect on their career or simply as a manifestation of their mental illness.
In two such cases that I have handled, the biggest challenge for the case was in obtaining sufficient evidence to convince the European Patent Office that apparently negligent actions were caused by mental illness. In one case, it was finally resolved by the US PTO striking off a US attorney, resulting in a declaration from the US PTO that I was permitted to file at the European Patent Office and which made a brief reference to mental illness as being an underlying cause of that attorney’s actions. In the second case, the European Patent Office were finally satisfied after we submitted a large volume of evidence showing steps taken to attempt (unsuccessfully) to contact and obtain cooperation from the individual concerned in the application for re-establishment of rights, together with sworn statements from others reporting conversations with the individual in which he had acknowledged that he was suffering from mental difficulties.
One issue that requires great care when dealing with cases with multiple parties, all of which have to be proven to have taken due care, is that proving due care by one party may make it difficult to prove due care by one of the others.
For example, proving that a European representative has taken due care in respect of a European patent application or European patent, may involve showing that the European attorney was correctly monitoring the deadline and provided multiple reminders to the instructing US attorneys. However, in order then to demonstrate that the US attorney took due care themselves, it may be appropriate to demonstrate what action the US attorney took in response to each of these reminders. A similar consideration may then pass on to the relationship between the US attorney and the applicant. As can be imagined, in some cases a little tact is required in order to prepare a case that balances the requirement to show due care by each of the parties.
A third central issue to any assessment of due care is the quantum of care taken.
Whichever party is being considered, the applicant, the European representative or some other agent, the case law of the Boards of Appeal at the European Patent Office is well-established that it is necessary to demonstrate a clear, well organised system, usually with an effective cross-check. An alternative way of expressing the requirement is to demonstrate that the cause of the deadline having been missed was an isolated mistake in a normally satisfactory system. However, within this generally accepted requirement, there is some variation.
In particular, the level of care required is accepted to be dependent on the size of the entity hosting the system.
In respect of a large entity, such as a substantial firm of European representatives, handling tens of thousands of deadlines annually, one may expect to see a comprehensive docketing system with, for example, cross-checks to ensure data entry is performed accurately (see for example J1/07). One would also expect to see a level of redundancy in the systems of such an entity that would not be required for a very small entity. In particular, for such a large entity, the systems in place should be such that a single error made by one individual would not result in a deadline being missed.
Accordingly, there may for example be a formal procedure for the European representative to confirm a deadline entered into a docketing system and/or a European representative at such a firm may be expected to have an independent mechanism for monitoring the progress of their work to ensure that they meet their deadlines that supplements a central docketing system rather than solely relies upon it.
At the other end of the scale, a small entity, where it is easier for an individual attorney to maintain personal supervision of all matters, may not need to demonstrate any significant redundancy in their system at all.
For example, in a case I handled where the critical error was made by a US attorney who was a sole practitioner, his deadline monitoring system was a simple cardboard box, in which he placed a copy of the first page of any correspondence relating to a deadline, with the relevant deadline boldly written on it in red. These were retained in deadline order in the box. On a daily basis, he checked the box to see which deadlines on which matters were imminent and/or upcoming in the future. This system was deemed sufficient by the EPO Examiner handling my case, despite the fact that it was susceptible to a single point failure, when the US attorney was unable physically to attend his office and inspect the cardboard box.
The level of care expected by the Boards of Appeal at the European Patent Office also clearly varies according to the importance of the deadline. Repeated cases at the European Patent Office (for example T439/06, T1764/08 and T41/09) have made it clear that significantly more care must be taken by a European representative in respect of the deadline for filing the notice or grounds of appeal than in respect of other, more routine, deadlines.
Accordingly, when considering the appropriate systems to put in place, it may not be appropriate to monitor all deadlines in the same way. It may be, for example, that it is appropriate for deadlines that may be remedied by Further Processing to be monitored by a system that does not include a significant level of redundancy, given that the dispatch of a Communication noting loss of rights by the European Patent Office (setting a period for remedying the missed deadline using Further Processing) in itself provides a level of redundancy. In contrast, deadlines with no easy remedy, such as deadlines for filing convention applications, oppositions and appeals should be monitored by a system that involves a degree of redundancy and, preferably active involvement by a qualified patent attorney rather than merely relying upon the accuracy of one or more assistants.
A final issue to be considered when considering whether a system in place meets the standard of due care concerns the knowledge of deficiencies within your system. In particular, if an entity is aware of a risk to the system, or a particular deficiency within the system, it is necessary to show that appropriate steps have been taken to mitigate that risk.
A classic example of this issue relates to the specific circumstances of migrating from one system to another. For example, a patentee may transfer their portfolio of Intellectual Property rights from one annuities service provider to another. In doing so, the applicant/proprietor should be aware that there are risks inherent in transferring the cases, namely that a right correctly recorded in the system of the old annuities agency may not correctly be recorded within the records of the new annuities agency after the transfer, resulting in its renewal fee deadlines not correctly being monitored.
It is therefore not enough to demonstrate that the new system for handling annuities using the new annuities agency is an effective system with an appropriate cross- check. Instead, it is additionally necessary to be able to demonstrate that appropriate special measures were taken to ensure that potential problems in transferring from one annuities agency to another were avoided or minimised. Of course, the appropriate measures will depend upon the size of the portfolio being transferred. For a small portfolio, it might be appropriate to have a manual check to confirm that all of the rights have been correctly entered onto the new annuities agency’s records. For a very large portfolio it may be more appropriate to demonstrate the care taken in designing and testing the electronic system used to migrate the data from the first annuities agency to the second annuities agency.
A further example of a case in which the Board of Appeal at the European Patent Office found that due care had not been taken as a result of the failure to appropriately deal with a known issue is provided by T1289/10. In this case, a deadline was missed due to the failure to receive an e-mail instruction to proceed with the matter in question as a result of the e-mail instruction being wrongly automatically classified as a spam e-mail, in turn causing the e-mail to be diverted to a quarantine area.
In this case, the Board of Appeal considered that the potential problem of e-mails being misclassified as spam and therefore directed into quarantine areas was sufficiently well-known that the system in question should have been sufficiently robust as to deal with the potential problem. In particular, the Board of Appeal considered that it should have been standard practice to check the quarantine area on a daily basis in order to check that no important instructions (such as these) had erroneously been placed in the quarantine area. This absence of a daily check, or at least the absence of a formal procedure for ensuring that it occurred on a daily basis, meant that the Board of Appeal considered that the error could not be considered to be an isolated mistake in an otherwise reliable system.
The Board of Appeal also highlighted in this case the fact that e-mail should not be considered as a robust nor instantaneous delivery system. Accordingly, the Board of Appeal indicated that for due care to have been taken, one would usually expect a system to be in place at the sender to check that any instructions sent by e-mail, particularly where they were important and sent close to the deadline, were correctly and timely received rather than being satisfied that a matter has been dealt with merely by virtue of having dispatched the instructions by e-mail.
As noted above, the European Patent Office model for assessing due care is a good model to study. Firstly, it is well considered and well documented. In addition, many restoration systems, both at national offices within Europe and around the world, have essentially the same requirements as the European Patent Office system. However, it should be appreciated that restoration procedures and restoration requirements vary enormously from country to country. Accordingly, the requirements to be satisfied in other jurisdictions should be kept in mind.
Firstly, the quantum of care required in order to demonstrate due care varies. There are certainly some countries that, despite using the same wording for the requirements for restoration as set out in Article 122(1) EPC, perform an assessment of the requirements of due care in a way that is significantly more lenient. Others, take a far stricter view.
For example, Italy has harmonised the relevant sections of its law such that the restoration procedure is nominally harmonised with Article 122 EPC. However, my experience for cases handled there is that the Italian Patent Office has interpreted the requirement of “due care” to mean that if due care is taken, deadlines are only missed if caused by actions that are beyond the control of the applicant, effectively making the requirements of due care so strict that it is equivalent to a force majeure requirement. Hopefully this interpretation will soften in time and will more closely approach the interpretation of due care taken by the European Patent Office.
The Italian interpretation of due care anecdotally appears to be somewhat shared by the International Bureau. It is now possible in several jurisdictions to request restoration of a priority claim where a subsequent application is not filed within 12 months of the first application for an invention. It is possible to request this in respect of a late filed PCT application so as to have an equivalent effect in the national phases. Some designated offices will only accept this if a standard of due care is proven (for example the European Patent Office); some designated offices will accept this if a standard of the deadline being missed unintentionally is proven (for example the UK IPO); and many designated offices will not accept restoration of priority at all at the present time.
In a case that I handled, the International Bureau had acted as the Receiving Office and had considered a request for restoration of the priority claim from the original US patent attorney. The International Bureau found in the applicant’s favour on the unintentional criterion but found against the applicant on the due care criterion on the basis that the error that had occurred was “an action within the control of the agent”, a rather strict interpretation of the requirement of due care.
Fortunately, the country of greatest interest where restoration of a priority claim is possible was the European Patent Office. Accordingly, when entering the European Regional Phase, we requested that the European Patent Office reconsider the decision of the International Bureau and put forward further arguments explaining that the interpretation of due care by the International Bureau was not consistent with that of the European Patent Office. Subsequently, we succeeded in restoring the priority claim in respect of the European Regional Phase of the PCT application.
An example of a possibly even stricter interpretation of the level of care required in order to prove due care is provided by OHIM. Wording corresponding to that of Article 122 EPC is provided for the restoration of designs and trademarks. However, the view of the Board of Appeal at OHIM as to what constitutes due care is clearly quite different, at least in respect of the monitoring of renewal fee deadlines.
For example, in R1474/2010-3 the Board of Appeal at OHIM made clear that a Professional Representative cannot in any way delegate responsibility for renewal fee payment to an annuities agency. Accordingly, the failure of a Professional Representative to provide their own monitoring system to ensure that renewals were timely paid, over and above that of an annuities agency, was considered to be a lack of due care.
To my personal belief, this view is misplaced because the use of a specialised annuities agency is, I believe, an excellent way to ensure renewal fees are timely paid. However, this is the view of OHIM at present. The only glimmer of light is that, unlike the Boards of Appeal at the European Patent Office, there is a further instance to which one could appeal, namely the European Court. However, whether anyone would consider the restoration of a Community Design was sufficiently important to justify the cost of an appeal to the European Court is debatable. The lesson, clearly, is that if one has a Community Design that is particularly valuable, take extra care to ensure that its renewal fees are paid.
A further interesting perspective on due care is provided by the French Patent Office. In my handling of restoration applications for French patents, it is clear that errors made by a patent attorney, whether an outside counsel or an in-house patent attorney, are generally excused, provided they are not egregious.
Accordingly, a restoration case in France can often be relatively easily obtained provided one can demonstrate that, but for a small lapse by a patent attorney, the deadline would not have been missed.
The only difficulty this can create is a potential conflict with corresponding restoration requests, for example if a series of national patents in Europe derived from a single European patent have all erroneously been allowed to lapse. In this case, all of the restoration requests must be factually consistent. However, by appropriate and very careful variation of the presentation of the cases, one may leave the reader of the French restoration application the impression that ultimately there was a small error by the patent attorney whilst not making it so explicit as to potentially jeopardise corresponding restoration applications for countries that follow the European Patent Office view that an error by the patent attorney is fatal to the restoration application.
In conclusion, when examining whether or not due care has been taken in relation to a missed deadline, as part of an assessment of a request for re-establishment of rights, the European Patent Office will consider all of the circumstances. Accordingly, there are few hard and fast rules for determining whether due care has been taken. This lack of an absolute objective test makes it of paramount importance to ensure that the grounds for re-establishment of rights are prepared in such a way as to present the case in the best possible light.
However, some lessons on due care are clear and provide guidance, for example when reviewing systems in order to determine whether or not they are fit for purpose.
Firstly, all entities having an involvement with a deadline must be shown to be taking care.
Secondly, once a deadline has been missed, it is too late to improve your system (at least from the perspective of attempting to recover the lost right) so any review should be performed before something goes wrong.
Routine tasks may be delegated to an administrative assistant but they must be appropriately selected, trained and supervised.
If responsibility for renewal fees is delegated to annuities agencies, this does not absolve the European representative or the applicant of all responsibility for renewal fees. In particular, the European representative must take appropriate and timely action in relation to any Communications sent by the European Patent Office to the European representative concerning unpaid renewal fees.
The level of care to be taken in relation to monitoring of a deadline must be considered both in relation to size of the entity responsible for it and the criticality of the deadline, which in turn is partly determined by the importance of the deadline and partly determined by whether or not there are any alternative remedies for recovering rights if the deadline is missed.
Finally, it should be appreciated that the act of reviewing one’s system is in itself indicative of taking due care. Therefore, if you plan a new system or review an existing system for dealing with deadlines, it is worthwhile documenting the system and any decisions you take. Such documentation may be invaluable if there is a subsequent problem because it may show that, even if the system was not perfect, it had been carefully thought about, namely that due care had been taken.
20 October 2017