All due care required! Professional representatives beware…

A recent decision by the European Patent Office’s Legal Board of Appeal (J 5/18) is a reminder of the high standards required of all professional representatives involved with a European application, including overseas representatives.

Under European (EP) patent law, a loss of rights – for example the refusal or deemed withdrawal of a patent application – resulting from a missed deadline may only be remedied if it can be shown that the time limit was missed in spite of “all due care” required by the circumstances having been taken. This process is known as re-establishment of rights.

The “all due care” standard is considerably more stringent than that applied by many other patent offices – including the UKIPO and USPTO – which only require that the missing of the deadline was “unintentional”.

In the recent decision, the case involved an EP representative taking instructions from a US representative of the applicant. The US representative failed to provide instructions to meet a further processing deadline. The deadline passed without action and so the application lapsed. The Board of Appeal decision arose from the subsequent failed request for re-establishment of rights.

The background was that there had been a change in the US attorney responsible for the case, the original attorney having left the firm. The new US attorney had misconstrued an earlier email from the original US attorney to the EP representative, which stated that the applicant was “interested in further processing” and asked for further details about the process. The new US attorney took this email to mean that the EP representative had already been instructed to request further processing. She also consulted with the original attorney’s former assistant, whose notes indicated that nothing needed to be done. The new US attorney therefore sent no instructions, despite reminders from the docketing department about the approaching deadline.

The Board of Appeal found that the new US attorney, in misinterpreting the email, had not acted with the necessary due care required by the circumstances because, in the Board’s opinion, the email noting the “interest” in further processing clearly demonstrated that no action had yet been taken.

The Board also determined that the US attorney was not allowed to rely on the notes of her assistant. Professional representatives, whilst able to delegate routine tasks to assistants, cannot relieve themselves of the responsibility for carrying out tasks which, by reason of qualification, fall upon them personally. Such tasks include assessing whether everything has been done to observe a time limit.

Finally, the Board also found that the new US attorney could not be excused in her mistake by virtue of the high workload resulting from the transfer of cases, stating that “a high workload does not absolve a representative from responsibilities or lessen the degree of due care required”.

The appeal was therefore dismissed.

This decision highlights the fact that the EPO holds not only the EP representative, but also overseas representatives, to the highest standards of conduct when assessing re-establishment requests. Therefore, in cases where there is the slightest ambiguity regarding the standing of a European patent or application it is strongly advisable to check with your EP representative, because an incorrect assumption may lead to irreparable damage.