Due Care and Annuity Reminders

The decision T942/12, which has been discussed by the IPKat here, relates to the “due care required by the circumstances to be proven when requesting restitutio in integrum.

While in the good old times, annuities have been paid (and actually had to be paid) by professional representatives, this business has now been largely conquered by specialized firms. The professional representatives then receive a notice saying “the annuities will be paid through other channels”, “you are no longer responsible for the annuities” or the like. While sending annuity reminders and actually paying the renewal fees are basically two different things, the question of reminders is rarely addressed explicitly. It is, however, generally considered to be implicit that the representative is not expected to send annuity reminders where it is clear that the payment is effected via other channels. In any case, the client would clearly not pay for such reminder services and would feel bothered and confused by receiving such reminders rather than appreciating the diligent service of his professional representative.

The above understanding is more or less common ground for reminders sent before the due date of the renewals, the situation gets complicated when it comes to official notifications indicating that the renewal fee can still be paid with surcharge and/or loss of rights communications or decisions received after the lapse of the period for payment with surcharge. The due diligence requires the representative to forward these communications unless the patentee explicitly says that he does not want this. Neither the instructions to “abandon”, to “let lapse” or to “withdraw” implies that the applicant or patentee does not wish to be kept updated on the available legal remedies for the case that the instruction was erroneous, unintentional or otherwise misconceivable. Unlike in the case of “ordinary” annuity reminders, the professional representative is expected and indeed obliged to forward official notifications drawing attention to the possibility to pay the renewal fees with surcharge or notification of a loss of right even in those cases where he thinks that the non-payment of annuities was intentional (which is often unknown to the representative) unless the client has explicitly waived the receipt of these notifications.

The duty to monitor annuity deadlines and to send reminders is considered to be transferred to the party entrusted with the effectuation of the payment whereas the duty to forward official communications and to inform available legal remedies remains with the professional representative.

The situation can of course been more complicated in cases where the ownership of the patent and/or and intermediate foreign professional representative who had sent the original instructions has changed. If the transfer of the patent is not registered, the professional representative might even have been informed about it. The waivers to receive certain information expressed by the original patentee and/or by the original foreign representative might not be valid for the new representative or patentee and might not reflect the desired services of the new patentee or representative.

Against this background, most of the patent law firms tend to forward communications received after non-payment of the annuity in case of doubt. A decision not to forward such communications would require detailed analysis of the previous instruction including the file history as described above, which would be more complicated than simply forwarding the communications by far. It is, however, difficult to charge a client for this service, in particular in cases where the responsibility for the payment of annuities has been transferred or where the right to receive this communications has been explicitly waived.

For important deadlines in general, the safe receipt of notifications of deadlines should be confirmed somehow and a series of reminders should be sent in cases of doubt.  Does this apply to cases where the professional representative is formally not responsible for the payment of annuities even if this might be perceived as bothersome in a case where the client has intentionally abandoned the protective right?  Or is the degree of due care required somehow lowered in this specific case?

The decision T942/12 has to be seen in this context. The core part of the decision goes as follows:

The renewal fee for the fifth year fell due by 31 July 2007 and was not paid. The notice drawing attention to Article 86(2) EPC dated 4 September 2007 was sent to the European representative of the applicant, Page Hargrave (PH). PH forwarded this notice to GH on 7 September 2007. GH states they have no record of ever having received this notice. PH took no further action with respect to the renewal fee as it had been instructed by letter of 9 September 2005 that it "was not required to maintain renewal fee reminder records or attend to the payment of renewal fees". ....

If a European representative is expressly instructed that he is not required to monitor the payment of renewal fees, the duty of due care does not involve that he nevertheless does so. It cannot be expected that the European representative monitors renewal fee payments at his own expense (he will not be able to charge fees for actions he is to refrain from according to his instructions). Furthermore, sending reminders against instructions may irritate the instructing party and may impair the relationship with the client. The client may have good reasons for giving such instructions, e.g. to avoid receiving reminders from different sources that will lead to additional work and expense for him. Reminders from different sources can also be a source of confusion and thus lead to mistakes. 

The present case therefore differs from the case law where it was held that even if the renewal fee was paid by someone else, the European representative remained responsible in the procedure before the EPO, and had to take the necessary steps to ensure payment (see Case Law of the Boards of Appeal, 7**(th) edition 2013, III.E.4.5.2 b)), as in none of those cases the European representative had expressly been instructed not to monitor renewal fees.

The Board therefore concludes that the duty of care of PH involved the forwarding of the notice drawing attention to Article 86(2) EPC to GH, not however checking whether GH indeed received the notice and took the appropriate action (emphasis added).

This blogger welcomes this important decision because it accounts for the complexity of real life circumstances within which professional representatives have to exercise their due care rather than imposing unrealistic requirements.

Beware of Digital Signature Folders

In the good old times, patent attorneys used to work by messing up the file, scribbling amendments into documents, dictate submissions to the offices and then letting their secretaries do the clean up and prepare the documents and present them neatly in a leather-would signature folder. The attorney would then put his glasses on, leaf through everything put his signature on the documents if everything was to his satisfaction and proceed to the tea break.

While the work distribution of messing up and cleaning up the file is basically unchanged, this blogger sometimes misses the leather-wound signature folder. The electronic equivalent is a PDF-viewer software included in the EPOline client and today's assistants have to prepare neat PDF documents for online-filing rather than writs on handmade paper. The PDF-viewer opens automatically when clicking on the "sign" button in the software and the electronic signature can be applied only after closing the viewer again and confirming that the signature shall be applied indeed. As compared with the leather-wound signature folder, the PDF-viewer is much less classy. Besides of the PDF-documents, it shows a lot of unreadable XML code and leafing through a submission with multiple attachments may be fairly bothersome.

It is therefore tempting to circumvent the clumsy PDF-viewer, have the documents presented on paper (in a leather-wound signature folder if you like) and to trust that your secretary makes sure that what is electronically signed is identical to what you have checked on paper.

This is what the attorney did in the case underlying the decision T 1101/14 available here. In this case, the secretary had been instructed to upload the document with the grounds of appeal but failed to do so. The attorney had applied the electronic signature without remarking that the grounds of appeal were missing. In the request for re-establishment of rights, it was argued that these were two isolated mistakes in an otherwise secure system.

The Technical Board of Appeal did not find the attorney's error excusable. The catchword reads:

A representative who mistakenly signs a statement of grounds of appeal having most of its pages missing must, in the absence of special circumstances which could justify the representative's mistake, be considered not to have taken all due care required by the circumstances.

What can the attorneys learn? We have to leaf through the electronic documents in the PDF-viewer before applying the electronic signature and are not entitled to blame the secretary if something is missing.
 

Last Call for British Representatives Still at 11pm

Though this blogger is not as acquaintaned with the customs in british pubs as some of his colleagues, he knows that the closing time of brithish pubs has been more or less abandonded in 2005 but is still observed (with some degree of flexibility) in some more traditionalist venues closing about one hour earlier than their continental counterparts.

The EPO counts among these venues, as reported by Laurent Teyssèdre on his blog "Le Blog du Droit Européen des Brevets" here.

The statement setting out the grounds of appeal was received at the EPO in electronic form at three minutes past midnight (CET) on 29 March 2011, i.e. three minutes after expiry of the four-month time limit for filing the grounds of appeal under Article 108 EPC but was sent from Cambridge at 11.03pm (British Summer Time)  on  29 March 2011.

The board confirms that the relevant time is the Central European Time applicable in Munich and The Hague but turns out to be unexpectedly generous in granting re-establishment of rights with regard the non-observation of the curfew:

The Board considers the appellant's request for re -establishment of rights as regards the time limit for filing the notice appeal allowable ( Article 122(4) EPC), in particular because the appellant has shown that the non - observance of the time limit was not caused by lack of due care but rather by a justifiable human error of the representative (emphasis added).

A closer look reveals that the generosity does not go so far that a delay of 3 minutes is considered excusable per se. Rather, the human error consisted in that the representative had missed the fact that the Central Europen Time had switched from summer- to winter-time on march 27 and had relied on the EPO web-site for the purpose of determining what time it was on the continent. The appelant argued:


The board did not further scrutinize the degree of diligence required by professional representatives to know the exact local time at the EPO office because the appeal was finally rejected on other grounds.

For the time being, it remains advisable for european patent attorneys residing in Great Britain to use a raido-controlled clock set to CET when planning last-minute filings.

It's Not Over When It's Over

Many jurisdictions know the legal remedy of re-establishment of rights or, as the humanists among us would call it, restitutio in integrum. A further common point is that the deadline for requesting the re-establishment of rights starts with the the removal of the cause of non‑compliance with the period, but ends at the latest within one year of expiry of the unobserved time limit.

The latter one-year term is usually considered an absolute one esuring legal certainty for third parties and expires irrespective of  the reasons for the failure observe a time limit.

Starting with the decision "Überwachungsvorrichtung" in 2009, the 10th senate of the German Bundespatentgericht and the BGH have develpoed a theory allowing for a re-establishment of rights even after expiry of the one-year term. The most spectacular decision "Crimpwerkzeug III" ( ZR 193/03) reported here and available (in German) here, the BGH granted re-instatement into the delay for filing new grounds of an appeal against the decision of an upper distruct court not to admit revision to the BGH because the new grounds related to contradictory claim interpretations in judgements, wherein the (binding) interpretation of the BGH was available only after the expiry of the delay.

In a very interesting new decision availabe here, the 10th senate of the Bundespatentgericht granted re-establishment of the right to pay the filing fees almost 2 years after the expiry of the time limit. The applicant had filed an application containing only claims and the office had informed him that the minimum requirements for the filing date were not met because a description was lacking. The office furhter noted that any fees would be refunded and that a new filing date could be obtained by filing complete documents.

The applicant responded by arguing that the claims would sufficiently describe the invention to qualify as a description. The argument was found convincing by the examiner who decided to keep the application pending. However, the office did not inform the applicant on this decision. The applicant got aware of this decision only after almost two years, when the GPTO notified the applicant that his right was lost due to non-payment of the filing fee.

Following the "Crimpwerkzeug" theory, the senate judges that re-establishment may be requested even after expiry of the one-year-term

"in specific exceptional cases for reasons of ensuring an effectice legal protection and the right to be heard, in particular when the reasons for the failure to comply with the time-limit do not lie in the sphere of the party but are rather to be assigned to the court/office".