Friday, 23 October 2015

T 1171/13: the assistant forgot to fax the statement of grounds of appeal


The Appellant (opponent) filed a request for re-establishment of rights because the assistant of the appellant's representative forgot to fax the statement of grounds of appeal on time while the representative had his holidays. The respondent (patent proprietor) argued that the system of the representative lacks cross-checks and, thus, that the system is not sufficient for showing all due care. The deadline/reminder for submitting the statement of the grounds of appeal was deleted after the representative indicated in the system that he had completed his tasks. The Board is of the opinion that, based on case law, the existing of such cross-checks is not relevant when the error only concerns forgetting to submit the statement to the EPO on time while the statement was ready on time. It seems that the system of registering deadlines and generating reminders is necessary to remind the representative to perform his task on time. On the contrary, it seems not to be necessary to use such a system for reminding the assistant to perform her task on time when it concerns an isolated mistake in a normally well-functioning system and when the assistant is well-trained, experienced, thoroughly component and well-instructed how to handle the letter drafted by the representative. I think that, for example, the Dutch Patent Office will require in such a case that the assistant also uses the system of generating reminders for submitting the letter on time.



Summary of Facts and Submissions

(...)

VII. The appellant's arguments may be summarized as follows:

Request for re-establishment of rights

The appellant's representative was aware that the time limit for filing the statement of grounds of appeal was due to expire on 29 July 2013 and prepared the document well in advance because he was due to go on vacation from 19 July 2013 to 4 August 2013. He gave the statement setting out the grounds of appeal to his secretary (Mrs A.) on 18 July 2013 and instructed her to transmit it to the EPO by fax. Upon his return from vacation on 6 August 2013 he discovered that Mrs A. had omitted to send the statement setting out the grounds of appeal to the EPO.

Mrs A. is a well-trained, experienced and thoroughly competent secretary. She is normally reliable. Her work is regularly monitored by a patent attorney. Her failure to carry out her instructions in the present case was an isolated mistake.

The firm which represents the appellant has established a secure and reliable system for monitoring time limits and ensuring that procedural steps are taken on time. Time limits are calculated and noted down by a qualified member of staff. They are then checked by a second qualified person. Incoming post is checked every day to see whether new time limits have been fixed. These are then recorded in an electronic calendar of time limits.

Once the relevant procedural step has been performed a chit ("Fristzettel") corresponding to the time limit is initialed by the responsible patent attorney and the time limit is deleted from the electronic calendar. Daily checks are performed by competent staff to ensure that all the time limits are met.

In the present case the decision under appeal was received by the appellant's representative on 20 March 2013. The time limits for filing a notice of appeal and statement of grounds of appeal were noted in the electronic calendar. The time limit for filing the statement of grounds of appeal was recorded as 18 July 2013 (i.e. four months from the date on which the decision was posted) since the representative's practice is to disregard the additional ten days provided for in Rule 126(2) EPC in order to build a margin of safety into the system.

The patent attorney who was dealing with the case (Mr R. Weber) prepared the statement setting out the grounds of appeal before his departure on vacation and gave it to his secretary, together with an initialed Fristzettel, and instructed her to fax the documents to the EPO. The secretary had demonstrated her reliability during many years of excellent service. She was well trained, highly qualified, experienced and conscientious. The attorney could therefore assume that his instructions would be carried out and that the statement setting out the grounds of appeal would be received by the EPO well before the expiry of the time limit on 29 July 2013 (the 28th being a Sunday).

Upon his return from vacation on 6 August 2013 Mr Weber discovered that the statement setting out the grounds of appeal had not been sent to the EPO.

The appellant's representative had taken all due care required by the circumstances. He had entrusted the performance of a routine task to a well trained, qualified, experienced assistant who had not previously made such a mistake. The assistant's work was subject to regular supervision.

The patent attorney was not obliged to check in every instance whether a specific document had been posted. After signing the statement setting out the grounds of appeal and entrusting it to his secretary with instructions to fax it to the EPO he was entitled to assume that the document would be posted, since that was a typical routine task which the secretary had always performed conscientiously in her many years of service (see Case Law of the Boards of Appeal of the EPO, VI.E.7.4.4, in particular the decisions in T 949/94, J 31/90, T 1062/96 and T 335/06).

Re-establishment of rights should be granted since the time limit was missed as a result of an isolated mistake by a reliable, experienced employee working within a normally satisfactory system.

(...)

IX. The respondent's arguments may be summarized as follows:

Request for re-establishment of rights

Under the case law one of the requirements of due care applicable to a system for monitoring time limits is that the system should incorporate at least one cross check which is efficient and independent. Such a cross check should ensure that a time limit is deleted only after two persons acting independently have checked that the action necessary to comply with the time limit has in fact been performed (see T 428/98, T 828/94 and T 1465/07). The system used by the appellant's representative lacks such a cross check.

The main defect in the system is that the patent attorney signs the chit authorizing the deletion of the time limit before the necessary action has been performed. The person checking whether time limits have been correctly deleted from the electronic system does not check whether the necessary procedural action has effectively been taken but merely whether a chit authorizing deletion of the time limit has been signed.

Therefore this is not a case of an isolated mistake within a normally satisfactory system. The system itself is defective.

(...)

Reasons for the Decision

1. Request for re-establishment of rights

1.1 The decision under appeal was dispatched to the parties on 18 March 2013. It was received by the appellant's representative on 20 March 2013. However, by virtue of Rule 126(2) EPC, it is deemed to have been received by the appellant on 28 March 2013. The two-month time limit for filing the notice of appeal therefore expired on 28 May 2013 (Article 108, first sentence, EPC) and the four-month time limit for filing a statement setting out the grounds of appeal expired on 28 July 2013 (Article 108, third sentence, EPC). Since 28 July 2013 was a Sunday the time limit was extended by one day (Rule 134(1) EPC). The appellant filed the notice of appeal on 16 May 2013 (i.e. within the relevant time limit) but failed to file a statement setting out the grounds of appeal by 29 July 2013. The appeal must therefore be rejected as inadmissible under Rule 101(1) EPC, unless the appellant's application for re-establishment of rights under Article 122 EPC is granted.

1.2 Article 122(1) EPC provides as follows:
"An applicant for or proprietor of a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing the refusal of the European patent application or of a request, or the deeming of the application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress."

1.3 The wording of Article 122(1) EPC implies that re-establishment of rights is available only to patent applicants and patent proprietors. However, the case law has established that an opponent who files a notice of appeal within the two-month time limit laid down in the first sentence of Article 108 EPC but who fails to file a statement setting out the grounds of appeal within the four-month time limit laid down in the third sentence of Article 108 EPC may apply for re- establishment of rights in respect of that failure: see G1/86 (OJ 1987, 447).

1.4 Under Rule 136(1) EPC a request for re-establishment of rights must be filed "within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit". The final sentence of Rule 136(1) states that the request for re-establishment of rights is not deemed to have been filed until the prescribed fee has been paid. According to Rule 136(2) EPC, the request must state the grounds on which it is based and set out the facts relied on; moreover, the omitted act must be completed within the relevant period for filing the request.

1.5 The conditions referred to in paragraph 1.4 above have all been met. The "the removal of the cause of non-compliance with the period" occurred on 6 August 2013 when Mr Weber returned from vacation and discovered that the statement setting out the grounds of appeal had not been transmitted to the EPO. The letter requesting re-establishment of rights was received at the EPO on 31 August 2013, well within the time limits specified in Rule 136(1) EPC. The prescribed fee was paid on 29 August 2013. The letter of 31 August 2013 stated the grounds on which the request for re-establishment of rights was based and set out the facts relied on. The "omitted act" was completed at the same time since a statement setting out the grounds of appeal was appended to the letter.

1.6 An applicant for re-establishment of rights must, according to the wording of Article 122(1) EPC,
demonstrate that "all due care required by the circumstances" was taken. The duty to exercise all due
care applies first and foremost to the applicant for re-establishment and then, by virtue of the delegation implicit in his appointment, to the professional representative authorized to represent the applicant before the EPO (J3/93, at paragraph 2.1).

1.7 Where a loss of rights results from some error in a party's failure to implement its intention to comply with a time limit, it is sufficient to show that the failure is due to exceptional circumstances or that it results from an isolated mistake within a normally satisfactory monitoring system: see Case Law of the Boards of Appeal of the European Patent Office, 7th edition, 2013, section III. E.4.

1.8 The appellant's representative has proved that he operates a normally satisfactory system for monitoring compliance with time limits. Incoming post is checked every day and time limits are systematically recorded in an electronic calendar. Time limits are deleted from the electronic calendar only when a chit indicating that the relevant procedural step has been performed is initialed by the patent attorney. The system is operated by qualified, well trained, experienced staff and generally functions in a satisfactory manner.

1.9 The failure to file the statement setting out the grounds of appeal within the relevant time limit was due not to a defect inherent in the system but to an isolated human error by an experienced and competent assistant who normally performs her duties satisfactorily. It is well established in the case law of the Boards of Appeal that a professional representative may delegate the performance of routine tasks such as posting a letter to an assistant (see, for example, J 5/80 (OJ 1981 343), at paragraph 5; J 31/90, at paragraph 7; T 949/94, at paragraph 3.1). An error made in the course of carrying out routine tasks is not to be imputed to the representative if the latter has shown that he or she exercised the necessary due care in dealing with the assistant. In this respect it is incumbent upon the representative to choose a suitable person, to properly instruct him or her in the task to be performed, and to exercise reasonable supervision (T 949/94, at paragraph 3.1).

1.10 The appellant's representative has shown that he chose a suitable assistant, gave her proper instructions and supervised her work adequately. He was entitled to assume that she would send the statement setting out the grounds of appeal to the EPO within the relevant time limit. The respondent's argument that the appellant's system for monitoring compliance with time limits did not incorporate an independent cross-check is not decisive in the present case. When a time limit is missed solely as a result of a failure to dispatch a document that has been prepared in good time, the requirement of at least one effective cross check is dispensed with, irrespective of whether or not a large firm is concerned. The reason is that, as compared with the monitoring of time limits, the risk of an error in the processing of outbound mail is low because such processing generally involves the execution of straightforward steps (T836/09, point 5.2). It follows that the appellant and its representative took all due care required by the circumstances.

1.11 Since all the conditions laid down by Article 122 EPC and Rule 136 EPC are satisfied, the appellant's request for re-establishment of rights must be granted.

(...)

Order

For these reasons it is decided that:
1. The request of the appellant for re-establishment of rights is granted.
(...)

This decision T 1171/13 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2015:T117113.20151001. The file wrapper can be found here. Photo "Anxious Pile" by Brendan C obtained via Flickr under CC BY 2.0 license (no changes made).

1 comment :

  1. When reading reestablishment cases I often get the feeling that the argumentation boils down to this:

    You should have a system to prevent errors. Yet, an error did occur. Thus you do not have a system to prevent errors, and thus did not exercise all due care.

    This one is different. What is described seems ordinary office routine, in which a slip-up was made. These kind of things should be re-establishable.

    ReplyDelete

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