J 0022/97 (Due care) 10-11-1999

1. Date of removal of cause of non-compliance

1.1. The board does not agree with the ground given in the appealed decision for refusing the appellant's request for re-establishment pursuant Article 122 EPC. The date of the removal of the cause of non-compliance in the sense of Article 122(2) EPC was not, as found by the Receiving Section, the date on which A. received the communication under Rule 69 EPC but was rather the date when the IP Director noticed that A.'s patent committee had erroneously decided not to continue the application on the basis of an incomplete set of claims. This was 20 June 1995.

1.2. According to the established case law of the Boards of Appeal, the cause of non-compliance normally can be considered to have been removed when the person responsible for the application is made aware of the fact that a time limit has not been observed (J 27/88; T 191/82, OJ EPO 1985, 189; T 287/84, OJ EPO 1985, 333; J 27/90, OJ EPO 1994, 422). This - as the Receiving Section pointed out correctly in the contested decision - is usually the date on which the applicant or his representative received the "Noting of loss of Rights" communication under Rule 69(1) EPC (Form 1099), in this case 10 January 1995.

1.3. However, the Receiving Section overlooked that this principle is not always applicable. As the Board of Appeal held in the cited decision it only applies "in the absence of circumstances to the contrary" (see J 22/90, OJ EPO 1993, 422). Here A., in the form of the responsible body, the patents committee, was aware of the time limits associated with a particular European application number: what the committee was not aware of as a result of having only an incomplete set of claims before them, was the true identity of the application, so that they were not in a position to reach a proper decision.

1.4. While not every mistake as to the claims of an application would be sufficient to destroy the basis of a decision to allow an application to be deemed withdrawn, in this case the claims not seen by the committee do allow the conclusion to be drawn that their decision was vitiated by a fundamental mistake as to the subject-matter of the application. Claims 1 to 100 appearing on pages 70 to 84 of the international application and considered by the committee contained some eleven independent claims, whereas claims 101 to 152 appearing on pages 85 to 91 of the international application and not seen by the committee contained an additional fifteen independent claims, partly relating to considerably different subject-matter.

1.5. Thus contrary to the reasons in the appealed decision, the Board agrees with the appellant that in the circumstances of this case, it was the mistake as to the identity of the application that must be treated as the cause of non-compliance. While the instructions not to take any action were the immediate cause of non-compliance, the mediate cause of these instructions was the mistake as to identity and it is to this mediate cause to which one should look for the purpose of Article 122 EPC.

1.6. The communication under Rule 69 EPC did not dispel this mistake as to identity. Rather such a communication was only to be expected in view of the instructions sent, and cannot be treated as putting the applicant on notice that something needed checking. The cause of non-compliance was only removed on 20 June 1995 when the IP director noted that the decision had been taken on an incomplete set of claims.

1.7. The application for restitutio can thus be treated as made within the two month time limit from the removal of the cause of non-compliance laid down in Article 122(2) EPC. The other conditions of Article 122(2) and (3) EPC were complied with by A. It thus remains to consider whether the time limit was not observed despite all due care in the circumstances having been used.

2. All due care in the circumstances

2.1. The case law of the Boards of Appeal recognises that Article 122 EPC is intended to ensure that in appropriate cases the loss of substantive rights does not result from an isolated procedural mistake within a normally satisfactory system (cf J 2/86, OJ EPO 1987, 362 at point 4). In particular it has been accepted in the case law that secretaries and patent assistants, and even patent attorneys, are not perfect, and that human errors can occur. However, as a counterbalance, the case law requires that the system used is one that is normally satisfactory, which means that the system used should also make some provision appropriate in the circumstances to allow for the occurrence of human errors and provide some checks for their detection. In decision J 27/88 of 5 July 1989 (not published in OJ EPO) relied on by the appellant, an error occurred in a letter drafted by a patents assistant. This letter was checked by the US attorney there involved but he too missed the error. But at least the system incorporated such a check. Further if a human error occurs just before a deadline, the error may be detected by the system too late to prevent the time limit being missed. But at least where a system detects the error for itself, even if one or more days too late, this is evidence that checks have been incorporated in the system by reason of which checks with a bit more luck any adverse consequences of the error would have been prevented. This can be taken into account when assessing whether the system can be considered as normally satisfactory.

2.2. Prior to the oral proceedings before it, the board had been under the, as it turns out mistaken, impression that the Patents Assistant had been left to select the correct claims for herself, which would have been a task beyond that which the board would have regarded as one which could reasonably be left to a patents assistant in a case with a complex application history such as the present one. The additional evidence of the IP director is however that she marked the claims which the Patent Assistant was to copy, so that provision of the incomplete copies can be regarded as an isolated error by an adequately instructed and supervised assistant in carrying out a task she could reasonably be expected to perform. The main question for decision is thus whether the system used, in which this error was not detected, can be regarded as satisfactory.

2.3. The error of the patents assistant in providing an incomplete set of claims was not the last opportunity to correct this error. A.'s patents committee considered the incomplete set of claims without the error being noticed, and subsequently instructions were sent to the attorneys without the error being noticed. The error of the patents assistant in providing the incomplete set would not have been decisive if any person at the meeting had relied on the documents in A.'s complete file instead of on the (incomplete) copy. It was not submitted to the board that anybody checked the copy claims against the original file before supplying the copies to the committee members, or checked them at the meeting, and the board must thus assume that this was not part of the system.

2.4. In answer to a question from the board the IP director stated that no check lists had been prepared or used identifying the number of claims in the international application, or identifying the independent claims. It was not submitted to the board that the search report from the European Office identifying the different inventions in the 40 claims then before the EPO was considered by the committee, and this would indeed have been difficult to consider given that the committee had before it only the differently numbered and more numerous claims of the international application. Nor was it submitted to the board that there was any cross-reference on the file to alert those responsible for patents as to what ongoing research was covered by the application.

2.5. Further the decision of the committee was apparently noted in the form of a decision that the US and the international applications were to be abandoned, without any comment as to what claims were considered by the committee. It was not submitted to the board that any check of the copied claims that the committee had decided on against the content of the file was made when giving the instructions to abandon, and again the board must assume that this was no part of the system.

2.6. It was explained to the board that at such a patent committee meeting some 20 to 40 cases would be considered in two hours. Given that on the evidence the Patents Assistant was preparing copies of claims for all cases to be considered, the need for some form of check that the copies for each case were indeed accurate seems pressing. While it might be natural to assume that a patents assistant can correctly copy a single set of claims, if she is copying some twenty or more, the chances of at least one mistake seem great enough for a check on accuracy to be called for, however reliable and conscientious the patents assistant had proved to be. One person of the committee looking at the actual claims in the original file would serve as such a check, so no great effort was needed.

2.7. Further this time schedule would appear to leave an average of 3 to 6 minutes consideration per case. Given that even the incomplete set of claims was fifteen pages long with eleven independent claims, even if more than an average amount of time was spent on this application, it was still dealt with very quickly. This helps to explain why the error in the copies was not noticed, but cannot be regarded as providing any form of check that the copies being considered were correct, or even enough time for anyone to be likely to question the completeness of the copied claims on the basis of a vague recollection from previous consideration of the international application.

2.8. It is not for the board to prescribe what system an applicant should use when looking after its patent portfolio. None of the matters above mentioned as not being part of A.'s system would seem in itself to be absolutely essential. Nevertheless the total absence of these, or any equivalent checks, precludes a finding that the system used was normally satisfactory, and thus that all due care in the circumstances had been used as required for re-establishment under Article 122 EPC. A system in which a decision whether to proceed or not is based only on copies of claims seems to be introducing a hazard, which would need to be counterbalanced by adequate checks to ensure that the copies are accurate. Here the system as described to the board incorporated no checks on the copies of the claims prior to submission to the committee, no checks when considering the copies of the claims in the committee, and no checks later when executing this decision, nor any cross-reference to ongoing research programmes covered by the application. The system cannot be regarded as meeting the requirements of Article 122 EPC.

2.9. The IP Director has assured the Board that apart from this instance, the system of making decisions relying on copies of the claims had otherwise worked without fail. However, with such an intrinsically hazardous system the board cannot accept this as decisive evidence that the system was satisfactory, but merely as evidence that those operating the system have been extremely conscientious. Here the communications between A., its US patent attorney and it European representative worked perfectly. Normally it is in these, and not internally in an appellant that some break-down occurs. That an error occurred internally which was not brought to light by the system, but only because the IP director was preparing a schedule for a licence agreement concerning an invention covered only by the claims not considered by the committee, only highlights the unfortunate defect in the system using only unchecked copies of claims for bringing to the attention of the committee the question of whether or not to proceed with the application and for executing the committee's decision. The practice, operated by A. in the instant case, involved a foreseeable risk, which could have been avoided or reduced if A. had taken appropriate precautions. The absence of any such precautions precludes re-establishment pursuant to Article 122 EPC as it has not been shown that the time limit was missed despite all due care in the circumstances being used.