T 1256/14 (Re-establishment of rights) 04-12-2020

Reasons for the Decision

1. The appeal is admissible.

2. According to Article 122(1) EPC, an applicant may have its rights re-established if it has shown that in spite of all due care required by the circumstances having been taken, it was unable to observe a time limit vis-à-vis the European Patent Office. First, it is the applicant who has to observe all due care (J 3/93, point 2.1). If a professional representative is appointed, the duty of all due care applies both to the applicant and the professional representative (J 5/80, OJ EPO 1981, 343, point 4; J 17/03, point 5). In considering whether all due care has been observed, the circumstances of each case must be looked at as a whole. The obligation to exercise all due care must be considered in light of the situation as it stood before the time limit expired (see references in Case Law of the Boards of Appeal, 9th edition 2019, III.E.5.2).

3. For cases where non-compliance with a time limit involves some error in carrying out the party's intention to comply with the time limit, the case law has established the criterion that due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory system (see references in Case Law of the Boards of Appeal, 9th edition 2019, III.E.5.3 and III.E.5.4).

4. Cause of non-compliance with the time limit

4.1 In this case, the system for monitoring the time limits for payment of renewal fees is based on two reminders sent four and two months before the due date of the renewal fee. If no instructions for payment are received before the due date, the application is considered abandoned. A letter (the "abandoned letter") is generated warning the client that the renewal fee has not been paid. The client is also informed that the renewal fee can still be paid on its instructions and that no further reminders will be sent. At the same time, the abandonment is recorded in the monitoring system.

4.2 The applicants argued that the failure to pay the renewal fee for the fourth year for the application at issue was due to a highly unlikely coincidence of three unrelated and isolated events (see point IX (a)). Non-compliance with the time limit therefore resulted from exceptional circumstances.

4.3 The coincidence of three mistakes in a single file is indeed exceptional (or unique, as the appellants put it). However, probability is not a criterion for re-establishment. In accordance with the case law, circumstances which cause a party to miss a time limit are exceptional only if they could not be reasonably foreseen by the party and are outside the party's or representative's control (see T 667/92, point 7 in fine; J 16/93, point 6.5 in fine; T 1201/10, point 13; J 14/16, point 6). The failure to send the first reminder and the loss of the second reminder cannot be regarded as being outside the representative's control. Furthermore, these events were not the cause for missing the due date. Of course, had the reminders been sent and received, the appellants would have been aware of the due date and might have given instructions to pay the renewal fee. The failure to send the first reminder and the loss of the second reminder thus contributed to the non-payment of the renewal fee. Nevertheless, the abandoned letter is the only mechanism built into the representative's system to prevent a loss of rights if no instructions have been received by the due date. The erroneous abandonment of the application in the monitoring system prevented the abandoned letter from being generated and sent. This error is therefore the ultimate cause for non-compliance with the time limit in this case.

4.4 This finding is in line with the appellants' own submissions. They argued that the error occurred outside the renewal process for the application at issue when three applications of another applicant were transferred to a representative of another association. The appellants' representative was not in charge of these three applications. Instructions for their abandonment were given by a colleague. As a consequence of the erroneous abandonment of the application at issue, the cross-check process by way of the abandoned letter was bypassed (see, inter alia, D2, points 12 and 15 to 18).

4.5 For the above reasons, there is no need for the board to assess whether the representative met his obligation to exercise all due care in spite of the failure to send the first reminder and the loss of the second reminder. It is also not necessary to deal with the findings in the contested decision that the system for monitoring time limits for payment of renewal fees was as such not satisfactory (see point II) as the non-compliance with the time limit was not the result of an error in monitoring it. The issue is rather whether the clerk's mistake in the process of a change of representation occurred in spite of all due care required by the circumstances having been taken.

5. Reasonable supervision

5.1 In accordance with the case law, a representative may entrust assistants with routine tasks. An assistant is not expected to meet the same standards of care expected of applicants or professional representatives. Moreover, an error by a negligent assistant is not attributed to the representative if the latter shows that they exercised the necessary due care in dealing with their assistant. In this respect, it is incumbent upon the representative to choose a suitable person, to ensure that this person is properly trained in the tasks to be performed, and to exercise reasonable supervision over their work (J 5/80, OJ EPO 1981, 343, headnotes II and III, points 6 and 7).

5.2 The entry of abandonment in the database for when the representation for an application has been transferred to an outside representative or service provider is an administrative task that may be delegated to a clerk. The representative could not identify the clerk who erroneously recorded the application as abandoned (see letter dated 3 September 2012, page 2, third paragraph). The exact circumstances of the erroneous abandonment can therefore not be established. However, the board accepts that both clerks in question were experienced persons properly instructed in the tasks to be performed. The issue is therefore whether the representative exercised due supervision.

5.3 J 5/80 (headnote III, point 7) requires reasonable supervision. This means adequate supervision, that is as much as would be carried out under the circumstances by the average reasonably competent representative. Strict or constant supervision is not required and would be counter to the purpose of delegating administrative tasks.

5.4 In this case, in a usual situation of transfer of responsibility for an application to an outside representative, the clerk's task is simple. It requires recording a (single) application as abandoned in accordance with the instructions given by a professional representative. As the system requires two entries in separate databases, the most likely errors that could result in a loss of rights are taken care of. To expect further precautions or a double-check would amount to requiring close supervision of the clerk's work in such a situation. The fact that the application is removed from the monitoring of time limits for renewal fees might justify closer supervision. However, for a change of responsibility, discontinuing the monitoring is in line with the purpose of transferring the file to another representative. The removal from monitoring prevents actions that conflict with the change of responsibility. The entry of abandonment in the database is the final administrative step. The responsibility for giving the correct instructions remains with the representative. Therefore, it is at least arguable that a double-check on the clerk's work would exceed the appropriate level of supervision as required by decision J 5/80.

5.5 In any case, the board accepts that the situation in question could not be foreseen to ever happen. A change of representation to another association is not encountered on a daily basis in the representative's office. The transfer of several applications at the same time had never occurred before. In addition, the record number of the application in question (RB640) was in between the record numbers of the applications to be transferred (RB618, RB638 and RB641-3). This was not only unfortunate but also impossible to anticipate. It would be excessive to retrospectively expect a professional representative to have taken precautions for this eventuality. The board also accepts that the error would not necessarily have been discovered had a check on the clerk's work been implemented. The erroneous abandonment of an additional file would possibly have remained unnoticed. In hindsight, it is of course possible to conceive a safeguard that could have been built in to prevent the error. However, this would interpret the standard of "all due care" in an excessive manner.

5.6 For the above reasons, the board holds that the supervision was reasonable in the circumstances even without a double-check on the clerks. The request for re-establishment is allowable.

6. Additional considerations

6.1 Although not relevant for the present decision, the board considers it appropriate to respond, as a courtesy, to a line of argument put forward by the appellants (see namely D1, D3, D7 and the comments starting on page 2 of the letter dated 26 November 2020). In sum, they argued that it was ultra vires to attribute a lack of all due care by a representative (or service provider) to an applicant who had itself shown all due care required by the circumstances.

6.2 The board would like to point out that the requirement of all due care by an appointed representative is established case law (see the landmark decision J 5/80, OJ EPO 1981, 343, headnote I and point 4). An applicant has to accept the actions of its representative, including the actions of the attorney's assistants and employees, on its behalf (J 5/80, headnote I and point 4; J 1/07, point 4.3). The current applicants' literal interpretation of Article 122 EPC takes into account neither the object and purpose of Article 122 EPC nor the supplementary means of interpretation, in particular the preparatory work, as set forth in Articles 31 to 33 of the Vienna Convention on the Law of Treaties. The board thus fails to discern any good reason to depart from decision J 5/80 and the case law arising from it.