Brief outline of the procedure
The USPTO decided to restore the right of priority based on the finding that failure to file the international application within the priority period had been unintentional.
The Receiving Section refused the request for restoration of the right of priority pursuant to R 49ter.2 PCT.
The applicant appealed this decision.
The board confirmed the latter.
The applicant’s position
The applicant argued that the failure to file the international application within the priority period had occurred in spite of due care required by the circumstances having been taken in accordance with R 49ter.2(a)(i) PCT.
Instructions had been given to a law firm to file a PCT application in good time before the one-year deadline based on the earlier-filed patent application US15/673,202.
The paralegal in charge of the application had been reminded by the docketing system again on the final day about the deadline for filing the PCT application and hence received an independent reminder from the system to avoid that the due date was overlooked or missing in the backup docket.
The paralegal had made her first mistake by wrongly converting the client instructions into a “NO filing required”. The due date was still docketed in the docketing system.
To remove such a date from the system – so the applicant alleged – approval from a supervisor/attorney was required. Here, the paralegal had made her second mistake in not contacting a supervising attorney or the applicant.
The deadline was removed from the docketing system, and no further patent application was filed before the one-year deadline.
The applicant further argued that a factual misassumption in the decision under item 2.13 as well as the reasoning under item 2.9 on the basis of T 808/03 had led to a negative decision by the Receiving Section.
Based on the correct facts and taking into account that T 808/03 did not state that a second mistake could not be made by the same person, the restoration of the right of priority should be granted.
During OP, the applicant argued that no system could fully safeguard against the mistakes of employees. This was confirmed by the fact that the EPO itself sometimes made mistakes when sending out communications, despite having the best computer software and highly professional employees.
The applicant also argued that the case law of the boards on “due care” had been developed decades ago and was too strict in that it did not reflect the technological and economic circumstances in which law firms organised themselves today. Since that case law had been developed, the volume of patent applications and renewal fees to be managed had multiplied, and office management had become computerised. Thus, it had become disproportionate to require parties or law firms to hire and assign additional employees for performing cross-checks.
While IT solutions for performing cross-checks existed, neither the EPO nor the USPTO nor WIPO provided parties or representatives with any such software.
The applicant further argued that the case law of the boards did not properly reflect the international character of the PCT system.
Although the PCT system permitted patent offices to apply either the “unintentional” or the “due care” criterion, applicants from all over the world could not be expected to anticipate how strictly the EPO applied the “due care” criterion, or to organise themselves accordingly.
The board’s position
Under Rule 49ter.2(a) PCT, where an international application claims the priority of an earlier application and has an international filing date later than the date on which the priority period expired but within the period of two months from that date, the designated Office will, on the request of the applicant in accordance with paragraph (b), restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied.
The EPO applies the “due care” criterion in the framework of Rule 49ter.2(a) PCT in accordance with EPO practice under Art 122.
According to settled case law, due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system.
The party requesting re-establishment of rights bears the burden of making the case and proving that the requirements are met (see Case Law of the Boards of Appeal, 9th edn. 2019, Chapter III.E.5.2).
The Board concurred with the decision under appeal that the failure to meet the one-year time limit for filing the PCT application is not the result of an isolated mistake within a normally satisfactory system.
In particular, the described procedure for de-docketing deadlines does not fulfil the requirements of an independent cross-check in a large firm as required by the case law of the boards (see Case Law of the Boards of Appeal, 9th Edn. 2019, Chapter III.E.5.4.4 a).
The internal procedural rules used in the law firm were as follows:
“Each paralegal is responsible for tracking deadlines for their patent matters and requesting the docketing department to de-docket each deadline after the desired actions (if any) for responding to the deadline have been taken.
A daily reminder is also sent from the docketing department to each paralegal, reminding the paralegal of daily deadlines. As an additional cross check, before de-docketing a docketed deadline, the procedures require that the paralegal assigned to a patent matter ensure that it is proper to de-docket a deadline.
If unsure whether it is proper to de-docket a deadline, the paralegal should contact either the supervisory attorney(s) for the patent matter and/or the client (e.g., the Applicant) to obtain their approval to de-docket the deadline.”
As pointed out by the Receiving Section, the described procedure does not amount to a cross-check independent of the person responsible for monitoring time limits because the paralegal decides whether a second person becomes involved or not.
The expressions “if unsure” and “should” leave a twofold margin of appreciation to the paralegal.
If the de-docketing of a deadline by the paralegal and the paralegal’s subsequent decision not to contact a supervisor are wrong, the system does not ensure that a second person will notice this mistake at a point in time when it can still be corrected.
The applicant had argued that a chain of errors could well be qualified as an isolated mistake within a normally satisfactory system. While this issue is not decisive anyway, the Board notes that the requirement of an “isolated mistake” is not met if the person responsible for the application makes, as in this case, a second mistake when processing the application (see decisions T 808/03 and T 1149/11).
The board noted that arguing that the EPO itself makes mistakes (“tu quoque”) amounts to saying that missing a time limit should not be held against the appellant for this reason.
For the board, two wrongs, however, do not make a right. Moreover, the issue at hand is the applicant’s mistakes only, and these are neither explained nor justified by this line of argument. It therefore has no bearing on the finding that the law firm’s monitoring system did not provide for an independent cross-check by a second person.
The board noted that while technological circumstances have indeed changed, missing deadlines can have the same grave legal and economic consequences for clients as before. Hence, changes in technological circumstances eliminate neither the need to require nor the proportionality of requiring large law firms to provide for an independent cross-check by a second person. The Board also considered it feasible for large law firms to use IT when implementing such an independent cross-check, thus using the changes in technological circumstances to their advantage.
As acknowledged by the applicant, the PCT system allows patent offices to apply one of two different criteria for the restoration of the right of priority. When different patent offices can apply different criteria, there can be different results. This is inherent to the PCT system.
The criterion applied by the EPO is the “due care” criterion, which is stricter than the “unintentional” criterion. As to the allegation that the application of the “due care” criterion at the EPO is overly strict, the Board notes that the case law recognises the principle of proportionality, according to which the requirement of due care must not be interpreted in an excessive manner that unreasonably restricts access (Case Law of the Boards of Appeal, 9th Edn. 2019, Chapter III.E.8).
The Board further noted that the case law of the boards on the “due care” criterion is well established and predictable.
It is not for failure of various arguments that the applicant has tried to convince the EPO that in the present case the right of priority had to be restored.
If restoration would have been granted it would give an undue advantage to Euro-PCT applicants over EP-Direct applicants.
Art 122 cannot have a different interpretation in matters of restoration of priority whether the applicant is a Euro-PCT applicant or a Euro-direct applicant.
It should also not be forgotten that the restoration of priority was introduced with the EPC 2000.
This has been an improvement.
On a totally different matter, in T 735/03 it was held that amendments filed during the international phase have to comply with the substantive requirements of the EPC, esp. Art 123(2).
Such a practice also insures equality of treatment between Euro-PCT and Euro-Direct applicants.
Why should it be different for the priority?