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Case Law of the Boards of Appeal

 
 
b)
Selection, instruction and supervision 

It is incumbent upon the representative to choose for the work a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision over the work (J 5/80, J 16/82). These duties are incumbent upon him also with regard to substitutes for holidays, special leave and other emergency situations. New assistants must be supervised on a regular basis for a period of at least some months (see J 3/88, T 715/91).

The case law cited above applies equally to a patent attorney residing in the USA (or his assistants) if he acts in collaboration with the duly appointed professional representative. In J 3/88 the US patent attorney of a "non-resident" applicant acted in collaboration with the duly appointed professional representative. The "docket clerks" (assistants of the US patent attorney) were entrusted with the performance of routine tasks such as noting time limits and checking due dates. The board stated that in order to be able to carry out these admittedly rather simple tasks properly, they needed nevertheless some basic knowledge. The board concluded that, although no special qualifications were required, it was fairly impossible for a docket clerk to perform these routine tasks satisfactorily without having previously been given appropriate instruction and being supervised closely until he was familiar with the job. A reasonable supervision of the activity of a newly engaged docket clerk implied that his work be periodically checked. In order to be effective and avoid culpable errors, these periodic checks should not be initiated mainly by the docket clerk on the occasion of his alerting the patent attorney in charge to a coming due date, but should rather be performed systematically irrespective of such alerts, at least during an initial training period of several months. These checks should be aimed at making sure that, especially in consideration of subsequently received fees reminders, the index cards were accurately updated.

In T 191/82 (OJ 1985, 189) the non-payment in due time of an additional fee was found to be clearly attributable to an unfortunate concatenation of errors by nevertheless properly selected and experienced employees.

In J 12/84 (OJ 1985, 108) the due care required in the circumstances was not observed when the employees of another company were instructed to sign for registered mail addressed to the representative, as he was not able to supervise the work of such persons not employed by his firm.

In T 309/88 the board stated that even employees without formal training as patent attorney's assistants could perform the task of recording and monitoring time limits. This was routine work which did not require specialised knowledge and professional qualifications. However, the assistant had to be properly instructed in the tasks to be performed and a trained employee had to be on hand to give advice.

In J 26/92 the board noted that according to the case law of the boards of appeal, routine tasks could be entrusted to an assistant provided that the necessary due care on the part of the representative had been exercised in dealing with the assistant. In this respect, it was incumbent upon the representative to choose for the performance of routine tasks a suitable person, properly instructed in the tasks to be performed, and to exercise reasonable supervision over their work.

In T 949/94 the board stated that a representative was expected to exercise a reasonable supervision over the work delegated. This did not mean that he had to supervise the posting of every letter. Once he had signed a letter and ordered his secretary to post it, he was entitled to assume that it had been posted. In the light of that, the board was satisfied that the representative had exercised due care in dealing with his secretary (J 31/90).

In T 1062/96 the board found that the posting of a letter prepared and signed by the representative was a typical routine task which the representative could entrust to an assistant (see also T 335/06). In the case in question the assistant was expressly instructed to send the letter by fax on the same day. In a properly organised office the representative could rely on the correct execution of such an instruction. The sending of the fax did not require any specialised knowledge or qualification. Therefore, the assistant, here a secretary, who had proven to be reliable in the daily work of the representative's office, could have been expected to do this job within her own responsibility. Since the order was to be carried out more or less immediately, a later check whether the fax had actually been despatched was not necessary.

In T 1465/07 the board considered the obligations of the representative in dealing with assistants developed by the case law of the Boards to be fully compatible with the principle of proportionality. In the case at issue the secretary of the representative had previously worked for another partner and after her taking up her new job the instructions given in relation to the backup check consisted in little more than the order to continue to perform that check in the same way as she had done in her former position. The board considered that this was insufficient and that she required supervision at shorter intervals during the period immediately following her taking up the new job. Requiring such supervision was not only appropriate and necessary but also not disproportionate, as supervision does not require a substantial amount of time.

In T 1764/08 the board held that filing an admissible appeal was not a routine task, but rather a complicated task which needed clear instructions from the professional representative to his assistant. In the case at issue, however, there was no evidence on file as to whether the assistant received instructions from the appellant's representative to send the statement of grounds of appeal to the EPO, and if so, what instructions.

In T 1149/11 the board held that if a representative of an applicant delegated tasks to an assistant, the representative carried the duty of care concerning the proper selection, instruction and supervision of the assistant. This responsibility lasted as long as delegation of tasks was given. The duty of care concerning supervision of the assistant required that an effective cross-check was implemented, at least in a firm where a large number of time limits have to be monitored. This was particularly so in the case at issue because the nature of the time limit concerned required particular care. In fact, the time limit for filing a notice of appeal and paying the appeal fee pursuant to Art. 108 EPC was absolutely critical because, if it was missed, there was no further ordinary remedy and the contested decision had legal effect (see also T 439/06, OJ 2007, 491).