12 February 2016

'All due care' urgently needed

Applying for a European patent means facing a multitude of deadlines. Not only concerning payments, but also for submitting documents. But what actually happens if one of these deadlines is missed? Here's an overview.

Broadly speaking, there are two alternatives with the European Patent Convention (EPC) when a deadline has been missed. The option of Further Processing is available for a significant number of missed deadlines, such as not responding to a Communication (a message from the European Patent Office) or not paying the Examination fee (the payment necessary to proceed with the patent granting procedure following the novelty report). The European Patent Office (EPO) charges a fine for this and allows for two extra months to rectify the error - no questions asked.

There are, however, a number of deadlines that do not qualify for Further Processing, such as the expiry of the priority year and submitting an appeal against a decision. The extra two-month Further Processing period is also excluded, as it would otherwise be possible to extend deadlines indefinitely.

All due care

What if something goes wrong anyway? In that case, the EPC has another solution: re-establishment. The EPO has been known to show compassion if there is good reason for having missed the deadline. Please note: you can't come in with a lame excuse like 'my dog ate my patent'. It is necessary to show that both you and your attorneys have acted with all due care (that you have undertaken due diligence and have done everything in your power to prevent mistakes) and that this is truly a result of circumstances beyond your control.

As a patent office, Arnold + Siedsma maintain an extensive system for monitoring deadlines (see our previous article). This allows Arnold + Siedsma to triple-check each deadline. This is done primarily to ensure that we do not miss a single deadline, but documenting these steps is also important if it should ever become necessary to show that we acted with all due care.

According to the EPOs case law, patent offices are also responsible for doing all they can to ensure that they receive instructions from their clients. So in case you ever find our reminders a bit bothersome, please remember we do it for good reason.

In short: if something goes wrong, an application for re-establishment can only be successful if all precautionary measures have been taken. Although it does appear that the EPO has become a bit more lenient recently.

The IPKat

A case in point is the IPKat blog mentioned last December in which a patent was transferred by an Australian patent holder, who explicitly instructed the patent attorney not to pay the renewal fees and not to send reminders. When the patent attorney received a letter from the EPO concerning unpaid fees and allowing for an additional period of six months to pay the fees along with a fine, the patent attorney forwarded the letter to the Australian agent, but took no further action. The warning was not received due to an error on the Australian side. As the fees were not paid within the extension period granted, the patent expired.

The new patent holder's request for re-establishment was initially denied, based on the fact that the patent attorney should have done more to determine the status of the application during those six months. When the ruling was challenged, the Technical Board of Appeal did not agree. The Board of Appeal indicated that attorneys are not obliged to send clients reminders if they have been explicitly requested not to do so. For that reason, the patent was reinstated.

We can only hope that this ruling (T 942/12) indicates that the EPO is shifting toward a more flexible position regarding the definition of all due care. Needless to say, we will continue to monitor deadlines closely, as it is best to avoid having to apply for re-establishment in the first place.