Home or Away – All Due Care still required for the EPO
1 August 2019
Anyone involved with patent prosecution will know that deadlines are an everyday fact of life. Missing a time limit set by the European Patent Office (EPO) can result in a loss of rights, which can be irreversible. This article discusses a decision by the EPO Board of Appeal on a case where a deadline was missed, and the applicant wanted to get the case reinstated. They were unable to do so, because “all due care” had not been taken by their US attorney, showing that the EPO’s requirements reach well beyond the borders of Europe.
In many cases, meeting a deadline is well within the control of an applicant or their representative, but there are times when this may not be so. The European Patent Convention (EPC) includes a mechanism intended to account for this. Article 122(1) EPC specifies that in order for a lost European patent application to be re-established following a missed deadline, the deadline must have been missed in spite of “all due care required by the circumstances” having been taken. The meaning of “all due care” has been established through a substantial body of case law, and it is arguably one of the highest hurdles for resurrecting an application known to patent systems worldwide. The nature of this hurdle has been clarified even further by J05/18, a decision of the Legal Board of Appeal and the subject of this article.
It had already been established before this decision was taken that different standards are applied depending on whether a mistake was made by an individual applicant, an assistant or a professional representative. This case addresses a further party to whom all due care was applicable, namely a US attorney who was instructing a European professional representative.
The patent application in question related to therapeutic agents used in combination to treat a variety of neuropsychiatric and related disorders. An Examination Report was issued, in which a deadline for response was set. This deadline was extended and reported to the US attorney, who replied saying they were not interested in filing a response before the deadline, but were “interested in further processing”. They also queried whether action must be taken at the deadline for response, or only after the EPO set a further deadline. They also asked for a cost estimate for proceeding with further processing. The appeal decision J05/18 hinged on this communication and the series of events that followed.
The European professional representative replied to the US attorney on the same day, answering all queries. They then received the notification of loss of rights, and communicated this to the US attorney, with an explanation of the further processing mechanism, and the deadline by which action must be taken if this were to be relied upon. Unfortunately, this letter was not recorded in the US attorney’s document management system, nor reported to the applicant, but the further processing deadline was recorded and monitored by the US firm.
The US attorney then left the US law firm, and her cases were reassigned to her colleagues.
The docketing department of the US law firm then sent reminders regarding the deadline for requesting further processing to the new US attorney responsible for the case, who discussed the deadline with her colleagues and believed that instructions for further processing had been given in the letter which had indicated an interest in further processing. As such, instructions were not sent to the European representative, nor were instructions sought from the applicant. The European representative, having received no instructions to proceed, took no action.
The missed further processing deadline was not realised until the US attorney conducted a check of the European patent register. An appeal was then filed to try to get the application reinstated.
In the appeal, four main mistakes were identified:
1) That the change of US representative was not communicated to the European patent attorney firm;
2) That the letter reporting a loss of rights from the European attorney had not been stored in the document management system of the US firm;
3) That the communication of the original US attorney indicating an interest in further processing had been misinterpreted as an instruction to request further processing; and
4) That the new US representative had not tried to confirm the status of the application with the European representative.
The Board of Appeal confirmed that the standard of “all due care” extends to third parties such as US representatives operating in a legal capacity on behalf of their clients. The Board found that the new US attorney did not show all due care when she considered the previous attorney’s communication (which indicated an “interest in further processing”), to be an instruction to proceed with further processing.
This case should act as a warning for European and overseas attorneys that where a deadline at the EPO is involved, in particular a non-extendible deadline such as further processing, all due care must be taken by all responsible parties.
Alexandra Orrin
Advanced Engineering group
If you require further information on anything covered in this briefing, please contact Alexandra Orrin (aorrin@withersrogers.com; +44 207 940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, August 2019
