UK: "All Due Care" – Re-Establishment Of European Patent Rights

The recent decision from the EPO's Boards of Appeal, J 23/14 (Re-establishment of rights), relates to an appeal filed against a decision of the Examining Division to disallow a request for re-establishment of rights. The European patent application in question was deemed withdrawn after the applicant failed to pay the renewal fee with surcharge by the required due date.

The European application originated from an international (PCT) application, which then proceeded in seven countries plus Europe on entering the national/regional phase. The applicant used a European Patent Attorney to file documents at the EPO, but monitored all relevant patent deadlines itself through an internal docketing system. On entering the national/regional phase, applications from the seven countries were successfully added to the docketing system. However, the existence of the European application was not entered into the docketing system.

When the renewal fee for the fourth year was not paid by the applicant, the EPO notified the European Patent Attorney that the application would be withdrawn if the renewal fee (plus a surcharge) was not paid by a specified date. The European Patent Attorney reported the notification to the applicant and the applicant's US attorneys.

No further action was taken, and the application was deemed withdrawn due to non-payment of renewal fees. A request for re-establishment of rights was filed, but rejected by the Examining Division because the applicant had not shown that "all due care" had been taken. The applicant appealed the rejection.

The Board of Appeal had to determine whether "all due care" had been exercised by the applicant and their professional representatives. The applicant submitted that the European patent application had been "inadvertently, inexplicably and unintentionally" not entered into its docketing system. The applicant also argued that because the application in question was the only one which had not been recorded in its docketing system, the system was reliable.

The Board of Appeal considered that "all due care" requires a cross-checking system. The preliminary opinion of the board was that the applicant had not proven the existence of such a system.

During appeal, the applicant provided more information on the internal process for updating the docketing system. Once the European attorney had submitted new application documents to the EPO, one of the applicant's employees would update docketing data on the system and another employee would check the entered data with that submitted by the attorney. The system would then send periodic reminders to the applicant regarding expiry dates of any deadlines.

The Board found that the initial mistake in the present case was that the application was not uploaded into the docketing system. According to the information provided by the applicant, the information on the system was only checked by a second employee if it was entered into the system in the first place. If the information was not entered into the system by a first employee, it could not be checked by a second employee because the second employee would not be aware of the information's existence. There was no independent process for ensuring that the information had been entered into the system by a first employee.

The Board held that only checking data already entered into the docketing system is not suitable for detecting missing data in a docketing system and therefore the applicant did not use an independent and effective cross-checking system. Thus the mistake that the application was not entered into the docketing system could not be considered an isolated error. The mistake originated from a fundamental flaw in the applicant's process for docketing information.

At the point in time when the time limit for paying the renewal fee with surcharge expired, the responsibility for payment of annuities rested with the docketing system and was therefore the applicant's own responsibility. The Board held that as a result, the applicant could not argue that it was relying on the responsibility of another party. There was therefore no need to consider whether the US or European attorneys had exercised "all due care".

Regarding the applicant's argument that this application was the only one that had not been entered into its system, the Board agreed with the Examining Division's reference to the case law (T 1764/08) that this does not show that a satisfactory system was in place.

The Board of Appeal concluded that "all due care" had not been exercised by the applicant, for two reasons. Firstly, the applicant's system for docketing filing information did not cross-check to confirm that data had been entered into the system. An independent and effective docketing system requires a cross-check that new information is input into the system, in addition to a check that the information input into the system is correct. Secondly, the applicant had ignored the email from its European attorney notifying it that the application would be withdrawn if the renewal fee (plus a surcharge) was not paid by a specified date.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.