5.5.4 Due care in dealing with assistants
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, OJ 1981, 343; J 16/82, OJ 1983, 262; J 26/92; T 2016/16). An "assistant" within the meaning of J 5/80 (OJ 1981, 343) includes a substitute replacing an assistant who is on leave, ill or absent for some other reason. The same standard of care must be exercised as regards the choice, instruction and supervision of the substitute as of the assistant himself (J 16/82, OJ 1983, 262). 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 Legal Board stated that in order to be able to carry out these admittedly rather simple tasks properly, they needed nevertheless some basic knowledge. The Legal 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 be performed systematically, at least during an initial training period of several months.
(i) Routine tasks
In T 1062/96 of 11 December 1997 date: 1997-12-11 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. See also T 2023/14.
In T 2253/13 the representative tasked an assistant with sending the statement of grounds of appeal to the EPO by fax on the final date of the relevant time limit, however the assistant overlooked that the fax transmission had not been successful. The board was satisfied that the appellant was unable to observe a time limit in spite of all due care. The representative was entitled to transfer such a routine task to an assistant without infringing all due care in dealing with the filing of the grounds of appeal, and there had been an excusable isolated mistake by the assistant.
In T 2450/16 the board held that, at least in the case in hand, the preparation of a notice of appeal by the representative's assistant could not be considered to constitute a routine task that could rightfully be entrusted to her by the representative.
In T 3029/18 of 3 June 2020 date: 2020-06-03 the board concluded that, once a representative had decided what fee had to be paid on what day, acting on the instruction was a routine task that could be left to an experienced and reliable assistant. In the board's view, it would be going too far and out of proportion to require another check of whether the instruction had been properly carried out. On this point, it endorsed the finding of the board in T 1355/09 that a very small firm was not required to have a system of checks in place.
(ii) Choosing a suitable person for the task
In T 191/82 date: 1985-04-16 (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 of 28 February 1990 date: 1990-02-28 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.
(iii) Properly instructing the assistant
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 T 2336/10 the board held that the representative did not appear to have issued proper instructions as regards the correct way to deal with the time limit for filing a statement of grounds of appeal. An assistant to whom that task was entrusted had to be instructed to work on the assumption that, once the notice of appeal had been filed and the appeal fee paid, a statement of grounds of appeal would in principle have to be filed within the four-month time limit laid down in Art. 108 EPC.
In T 198/16 the board held that a representative must give express and clear instructions to an assistant to the effect that the appeal fee had to be paid. It was not enough to rely on the assistant's deducing the duty to file the payment form from the notice of appeal.
In T 2450/16 the board noted that epoline® mainly dealt with the electronic filing of documents with the EPO. In the board's understanding, it was not an electronic guide supposed to convey knowledge about the right document(s) to file in a given situation. Rather the use of epoline® presupposed such knowledge. In other words, the assistant's use of epoline® could by no means replace the need for proper instructions from the representative.
(iv) Reasonable supervision
In T 949/94 of 24 March 1995 date: 1995-03-24 the board stated that a representative was expected to exercise 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, T 1171/13).
In T 1465/07 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 back-up check consisted of 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 1149/11 the board held that 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 time limit for filing a notice of appeal and paying the appeal fee pursuant to Art. 108 EPC was absolutely critical; if the time limit was missed, there was no further ordinary remedy and the contested decision had legal effect (see also T 439/06, OJ 2007, 491).
In T 555/08 the board found that the requisite standard of due care was not met by uncritically accepting the accuracy of an assistant's oral statements although they must have been open to doubt (see T 602/94). Failure to query or check such statements had to be viewed in the context of the obligation to supervise assistants. Especially where there were signs that mistakes might have been made, it was essential to check whether assistants were correctly performing the duties assigned to them.
In T 2016/16 the board observed that the representative was not discharged from his or her duty to properly instruct and supervise the assistant, even if the time limits entered by the assistant in the docketing system were normally double-checked by a patent attorney.
- T 0549/24
In T 549/24, the board held that intentional deception by an assistant designed to bypass existing cross-check controls constitutes exceptional circumstances justifying re-establishment under Art. 122 EPC.
In the case under consideration, the application had been deemed withdrawn pursuant to R. 71(7) EPC, and no remedy had been pursued by the applicant within the time limit set by the communication under R. 112(1) EPC. The examining division had found the request for re-establishment of rights in respect of the time limit for requesting further processing, filed by the then newly appointed representative, to be admissible but not allowable. The examining division could not conclude that the applicant had acted with all due care required by the circumstances, as it found no evidence that the applicant had a satisfactory monitoring system for the activities of Mr R., the assistant in charge of the patent portfolio, nor an effective substitution system for Mr C., the company’s CEO and the person bearing ultimate responsibility, who was suffering from deteriorating health.
The board disagreed. It found that Mr C. was not entirely prevented from carrying out his professional duties. While his condition did limit his ability to perform certain tasks, it did not render him completely incapable. Mr R. had been working as Mr C.’s personal assistant when he was entrusted with responsibility for the applicant’s patents. Even during the most severe phase of his illness, Mr C. regularly contacted Mr R. by telephone and made occasional short visits to the office to inquire about the status of the applicant’s patents. The board considered that, in the circumstances of the present case, a complete substitution of Mr C. was not necessary to satisfy the required standard of due care. On the contrary, the board regarded this a reasonable arrangement in the case of illness of the responsible person, as it served to compensate for the limitations resulting from Mr C.’s medical condition and allowed him to remain in a position to continue performing his functions, thus complying with the applicable standard of due care.
With regard to the supervision of Mr R., the board considered, in view of the new evidence submitted on appeal, that the applicant did maintain a comprehensive monitoring system, as required by the case law in view of the size of the company, including an online spreadsheet editor for tracking the patent portfolio. This spreadsheet was regularly updated with action points and time-limit reminders. In addition, weekly face-to-face meetings were held with the responsible person whenever Mr C. was present, and, during the most severe phase of Mr C.’s illness, these took the form of regular phone calls and short office visits. The board was therefore satisfied that Mr C. had exercised all due care under the circumstances, including selecting, instructing and supervising his assistant. The board noted that Mr R. had deliberately concealed information, going so far as to create a private email account to bypass the company’s servers, and had either failed to update or had falsely marked IP records relating to renewal time limits. As a result, Mr C. had been kept unaware of certain time limits, despite having exercised all due care, since Mr R’s intentional deception was designed to also bypass the cross-check controls put in place by Mr C. Contrary to the examining division’s approach, which did not assess whether Mr R.’s behaviour justified re-establishment of rights, the board held that the disruption caused by Mr R.’s behaviour constituted exceptional circumstances justifying re-establishment under Art. 122 EPC.
The board observed that the circumstances of the present case differed meaningfully from those in T 516/09. By contrast, Mr C., acting in his capacity as the applicant’s CEO (and not as a professional representative), had implemented a system for tracking time limits using an online spreadsheet tool and actively monitored its operation. This system included cross-checks and regular updates with Mr R. Unlike the representative in T 516/09, Mr C.’s core responsibilities did not centre on patent administration, and he could not reasonably have been expected to detect deliberate deceptions designed to circumvent internal controls. The board therefore concluded that the present case did not present the supervisory deficiencies identified in T 516/09.
Accordingly, the decision under appeal was set aside and the appellant’s rights were re-established.