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J 8/21 – Restoration of priority granted by the USPTO as RO – Refused by EPO as DO

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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.

Comments

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?

https://www.epo.org/law-practice/case-law-appeals/recent/j210008eu1.html

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9 replies on “J 8/21 – Restoration of priority granted by the USPTO as RO – Refused by EPO as DO”

When it comes to prospects for restoration, there is a chasm of difference between the USA’s “unintended” test and a “due care” test. This can come as a horrible shock for American patent attorneys.

For patent attorneys everywhere, is the EPC the world’s least forgiving jurisdiction? And if so, is this OK? Or is it that the USA is out on its own, uniquely tolerant of lapes by its patent attorneys? I’m curious. Do readers have any “tales from the tenches”?

Fat Pandasays:

It is a very interesting and also a not surprising decision. Reasonable and fair. Thanks for posting.

To: MaxDrei, for me the practice of the EPO is very reasonable, and somehow it stands in the middle. The Chinese patent office CNIPA is even stricter then the EPO. When it acts as rO, it accepts both “unintentional” and “due care”. However, as dO the CNIPA does not accept either of them!! So if the applicant misses the regular priority period, he would not be able to claim priority at all when entering Chinese national phase.

DXThomassays:

Dear Max Drei,

The US patent landscape is not only different to that of other countries in matters of restoration.

Just think of the grace period, the priority right based on provisional US applications, cf. G 1/22 and G 2/22, the first inventor to file rule since 2013 preceded by the first inventor rule.

Last but not least, think on how added-matter is handled over the Atlantic. Incorporated by reference is a typical US practice.

There is thus more than for restoration that there is a chasm of difference between the USA and not only Europe, but the rest of the word.

MDMackettsays:

Until you have faced having to apply for restoration before the EPO, it is difficult to know exactly what would be needed to be successful. Based on my experience, you need to provide what you think you need to provide and then delve into the matter more deeply!

Having had to apply for restoration of priority right myself in the past with the EPO as rO, it was a daunting task as one had to pick apart what actually happened, to correlate what happened with supporting data and to present the application for restoration of priority right, together with the supporting data, to the EPO in a structured way. Luckily, my application for restoration of priority right was successful.

However, having your restoration to priority right granted by the EPO does not automatically mean that this will carry over to all dOs and, in my case, it meant having to apply again before another dO, but I was able to base the further application on that made to the EPO.

I believe that harmonisation of patent law and procedures worldwide is something that every attorney would like to see; however, when there are different standards applied in the worldwide communication, for example, “unintentional” vs “due care”, it is unlikely that harmonisation in all patent law and procedures will come to fruition without the lower standard being adopted whatever it is.

It is interesting that China will accept restoration of priority right as rO but not as dO – but they are not the only jurisdiction to have this split …

Why is it “interesting”? When an Applicant asks its rO to reinstate, the rO surely in mindful of all those jurisdictions that apply an “unintentional” standard. Why should an rO (say China) deny its Applicants the opportunity to petition the USPTO, as dO, for reinstatement? Meanwhile though, as dO, China is free to apply a more severe “all due care” standard like that at the EPO.

It would get a bit “interesting” though, if the Chinese Patent Office is inconsistent and , for example, applies an “unintentional” standard to its own domestic applications but declines to reinstate applications of all non-Chinese applicants no matter how much care they took with due dates prior to entry into the PCT national phase in China.

DXThomassays:

Dear Max Drei,

Should China accept “unintentional” for domestic applicants and require “due care” for foreign applicants, it would then be in clear breach of Art 2(1) of the Paris Union Convention of 1883.

The Paris Convention is well known for the “priority right”, Art 4 PUC, but also for requiring the same treatment to national and foreign applicants, cf. Art 2(1) PUC.

DXThomassays:

Dear Margaret,

As China will accept restoration of priority right as rO but not as dO irrespective of the nationality of the applicant, it abides by Art 2(1) PUC.

There is no harm to accept “unintentional” as rO as it leaves the dO free to adopt the standard it wishes.

For the rest, the problem finds its origin in the PCT itself. See my reply to John Gray.

John Graysays:

The UK switched from ‘all due care’ to ‘unintentional’ a few years ago. I am used to the EPO system and there is no reason why overseas parties should be subject to different rules (as has been said).

Having said that, it is very unsatisfactory harsh that the applicant is the one who suffers for the mistakes of their representative.

It is also somewhat unsatisfactory that the representatives and applicants are held to a higher standard than the office itself.

DXThomassays:

Dear John,

Your are certainly right, but telling the office that it should accept my mistake because it makes mistakes itself is to me not the best argument to present. The office sits on the longer lever!

That as representative you would prefer to see the less stringent rule adopted is understandable.
On the other hand, Art 122 exists and the way its handled by the BA is well known.

You are however right when you say that Euro-PCT applicants should not benefit of a better treatment than Euro-direct applicants.

The whole problem stems for the PCT itself.

Two schools manifestly opposed each other.
I would take bets that the US and a number of countries were in favour of the “unintentional” clause.
The EPO and other countries more in favour of the “due care” clause.
As a compromise, both rules were adopted.

We do all know that in certain situations compromises are the worse solution, see for example the “Central” Division of the UPC foreseen in 3 places!

Another example not necessarily to follow are solutions of EU problems after a marathon negotiation. In the EU the problem is compounded by the fact that in lots of cases unanimity is required. It makes things even worse. But that’s life.

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