Key points
- This is an older case wherein a Notice of appeal was filed late and the Board refused the request for re-establishment. In the resulting litigation, the patentee reportedly alleged a loss of profits of about €1 billion
- However, the decision has become topical again because of this news item at ManagingIP (link): “BASF targets [patent attorney firm] in €1bn row over missed patent deadline”.
- Managing IP writes that according to documents seen by them, BASF alleges that the total “loss of profits” suffered by BASF as a result of the revocation of the patent was €1.05 billion. The trial was reported to begin on 16 April 2021. Managing IP writes that the “firm admitted it was responsible for the loss of the appeal”. However, reportedly the firm stated that the patent at issue was a “classic example” of the patentee trying to “over-reach its attempted scope of monopoly, followed by a series of futile attempts to add in limitations that could not have saved the claims”, Managing IP writes.
- Managing IP mentioned the expiry date of the patent which allowed me to search for the filing date and the applicant. These matched with the Board decision below.
- Addendum: see also this article: https://www.juve-patent.com/news-and-stories/cases/basf-sues-carpmaels-for-damages-over-missed-appeal-deadline/
- Addendum 01.11.2021: the damages claim was rejected by the UK High Court, in first instance, see here: https://www.bailii.org/ew/cases/EWHC/Ch/2021/2899.html
- Addendum: the case was settled for nominal damages of £1 according to https://www.juve-patent.com/news-and-stories/people-and-business/basf-and-carpmaels-settle-missed-appeal-deadline-case/
19. The appellant further argued that in assessing the requirement of "all due care" under Article 122(1) EPC it should be borne in mind that the notice of appeal was filed only a short time after the due date and that the public should have been aware that an appeal would be filed. The present Board does not share the appellant's opinion that the principle of proportionality can be applied when assessing the requirement of "all due care" under Article 122(1) EPC. Rather, it takes the view that the requirement of "all due care" means that only circumstances which happened before the time limit expired can be considered or, in other words, the obligation to exercise "all due care" must be assessed in the light of the situation as it stood before the time limit expired (see decisions T 1465/07 of 9 May 2008, reasons, point 16, and T 439/06 of 31 January 2007, reasons, point 15).
20. In considering the requirement of "all due care" under Article 122(1) EPC, the Boards have ruled in numerous decisions that the circumstances of each case must be looked at as a whole (see e.g. decision T 1465/07 of 8 May 2008, reasons, point 18). In the present case, looking at the whole series of failures and mistakes which took place, the Board sees no basis to argue that the failure to meet the appeal time limit could be considered an isolated mistake in a well functioning time monitoring system.
Final conclusions
21. As, therefore, the circumstances of the present case do not satisfy the requirement of "all due care" pursuant to Article 122(1) EPC, the request for re-establishment must be refused. Consequently, both the notice of appeal and the payment of the appeal fee were belated and the appeal is deemed not to have been filed pursuant to Article 108, first sentence, EPC. Furthermore, as there is no appeal in existence, the appeal fee must be reimbursed (decision J 21/80 of 26 February 1981, reasons, point 4, OJ 1981, 101, decision T 493/08 of 29 September 2009, reasons, point 7).
ORDER
For these reasons it is decided that:
1. The appellant's request for re-establishment of rights is refused.
2. The appeal is deemed not to have been filed.
3. The appeal fee is reimbursed.
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