T 1823/16 - (II) Cross check when docketing, and RE

Key points

• In this RE case, the time limits for filing the Notice of appeal and the Statements of grounds were both missed, because the due dates were not docketed by "the assistent" who worked in the large in house IP department of the applicant. This was an isolated mistake. The question is whether there was " normally satisfactory system" , in particular whether the required cross check was in place. In the case at hand, there was no cross check at the initial stage of docketing them, only for the correctness of docketed due dates.. 
• " In the Board's view, a cross-check to be effective has to be introduced at an earlier stage, i.e. at the data entry phase, because if a mistake happens at that point the case will not be flagged at all. "
•  " Clearly, the data entry at that stage is of utmost importance, because if not properly done, the case will completely disappear. Thus a cross-check at that stage is essential." 
• The appeal is rejected as inadmissible. The decision was taken on 28.06.2018, i.e. after the referral in G 1/18 (received on 07.06.2018), the Board however does not comment on that. The Board merely notes that " both the notice of appeal, as well as the statement setting out the grounds of appeal were not filed in due time, the appeal is inadmissible". However, G 1/18 uses and/or, i.e. also asks if the appeal is deemed not filed if both the Notice of appeal and the appeal fee are late. The late filing of the  Statement of grounds can not make the appeal "deemed filed" (but inadmissible) in my view. 
• This is the second post about  T 1823/16. 

EPO  T 1823/16 -  link

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 09779319.4 pursuant to Article 97(2) EPC. The decision was handed over to the postal service provider on 10 December 2015. Both the notice of appeal and the statement setting out the grounds of appeal were filed on 28 June 2016, together with a request for re-establishment of rights. The fee for re-establishment and the appeal fee were paid on the same day.

[...]

Reasons for the Decision

Thus the request for re-establishment of rights is admissible.

3. According to Article 122(1) EPC, an applicant shall have his rights re-established if he has sufficiently demonstrated that in spite of all due care required by the circumstances having been taken, he was unable to observe the time limit. When an applicant is represented by a professional representative, a request for re-establishment cannot be acceded to unless the representative himself can show that he has taken the due care required of an applicant (J 5/80, OJ EPO 1981, 343, Headnote 1). An isolated mistake by an assistant that happens in a normally satisfactory system is excusable. Where a large number of dates has to be monitored at any given time, it is normally expected that at least one effective cross-check is built into the system in order to be satisfactory. The cross-check must be independent of the person responsible for monitoring time limits. (cf. Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, III.E.5.4 and 5.4.4).

4. In the present case, the non-observance of the time limits resulted from the fact that Mrs S. did not enter the due dates for filing the appeal into Inprotech, which was the system in place for monitoring time limits. Instead, Mrs S. filed the decision in eFiles where it remained unnoticed. This can be qualified as an isolated mistake by an assistant. The crucial question here therefore is whether the system as described can be considered to be adequate in view of the requirement of all due care under Article 122(1) EPC as applied by the Boards of Appeal.

5. It is uncontested that the representatives' firm is a large one where many dates have to be monitored so that a cross-check has to be foreseen. The point of dispute is, at what stage in the system must this cross-check must be built in. The representatives suggest that the cross-check, as required by the jurisprudence, did not have to apply to the recording of time limits, because this was not part of the monitoring process. Therefore, the cross-check foreseen by the consultant after he had been made aware of a new document and due date by the Task created by the assistant was sufficient.

6. However, in the Board's view, a cross-check to be effective has to be introduced at an earlier stage, i.e. at the data entry phase, because if a mistake happens at that point the case will not be flagged at all. In decision J 9/16 of 21 November 2016, the Legal Board of Appeal said that "the majority of re-establishment cases concern situations where a recorded time limit was not followed up, or where the time limit was not recorded at all. It is not apparent to the Board that a different standard of all due care should apply to these two situations. Accordingly, it appears reasonable to also expect an independent cross-check when data is entered in a time limit monitoring system, and not only for the strict 'monitoring' of time limits already recorded." (point 11 of the reasons). The present Board agrees entirely with this view. The recording of a time limit is the very first step in monitoring it.

7. The cross-check provided for in the representatives' system could only take effect, once the assistant had performed her duties correctly and had entered the due dates in Inprotech and had created the Task. Otherwise, the representative would not become aware of a new document and deadline. The responsibility for this lay completely in the hands of the assistant without any counter check, so that if she made a mistake it would not be recognised by anybody. Clearly, the data entry at that stage is of utmost importance, because if not properly done, the case will completely disappear. Thus a cross-check at that stage is essential.

8. The representatives submitted in the oral proceedings that when introducing their electronic system, they tried to mirror what was in place for paper files. In the paper world, when a document arrived, it was put in the paper file and when the consultant received the file, he checked whether the time limit was correctly noted. If the file had got lost at that point, or if the document had fallen out of the file, it would also not have been noticed. When moving to electronic tools no stricter standard of due care should be applied. The Board notes in this regard, that when examining whether a system is satisfactory, it is essential always to assess the system in place at the relevant time at the office in question. Each system has different advantages and drawbacks which have to be balanced and accordingly need different safeguards. What might be effective in the paper world might not be for the electronic world. In case of an electronic system, a cross-check would not be provided just because it could be easily performed, but because of the fact that if no data are entered the case becomes completely invisible. In the paper world at the same stage in the process, the physical file would have been retrieved and so it would have been visible at some point. Therefore, a cross-check at the data entry phase is essential, because every further action hinges thereupon. Since this was not the case, the Board cannot acknowledge that there was a satisfactory system in place and therefore all due care required by the circumstances has not been observed.

9. The appellant referred to decision T 413/91 of 25 June 1992 which, in his view, was in contradiction to decision J 9/16. He argued that, according to this decision, a mistake can only exist if a wrong date was inadvertently entered into a monitoring system and that only when such a fact made the party unable to observe the time limit would the circumstances of the case be examined as to the second condition "in spite of due care". However, decision T 413/91 dealt with a completely different issue. It concerned the question of whether an opponent was prevented from observing a time limit although he was aware of it, but intentionally refrained from taking action because he believed that he could come to an agreement with the patent proprietor. Therefore, the statement made in decision T 413/91 was in a completely different context. In the present case, it is clear that the appellant was hindered and the reason was because the time limit was not noted.

10. Referral to the Enlarged Board of Appeal

According to Article 112(1)(a) EPC, the Board shall refer any question to the Enlarged Board of Appeal if it considers that a decision is required in order to ensure uniform application of the law, or if a point of law of fundamental importance arises.

As set out above, the Board does not see that there is a divergence between decisions T 413/91 and J 9/16 and thus uniform application of the law does not require a referral.

The question which the appellant requests the Enlarged Board to answer is about all due care with regard to entering and monitoring time limits in large firms and how a cross-check is to be implemented. In considering whether all due care has been observed, the obligation to exercise due care must be considered in the light of the situation as it stood before the time limit expired. The steps the party took to comply with the time limit are to be assessed solely on the basis of the circumstances applying at that time (Case Law of the Boards of Appeal of the European Patent Office, 8th edition 2016, III.E.5.2). Thus, what all due care requires is always dependent on the individual facts of a case and it is not just one system which a Board can prescribe. In decision J 9/16, the Legal Board made it clear that it is not for the EPO to dictate how docketing and time limit monitoring must be organised in any given office, or to suggest how any given system could be improved, in order to comply with the "all due care" requirement (point 15 of the reasons). This is very much a question of fact and not of the law. However, only points of law may be referred.

11. Since the request for re-establishment of rights is not allowable and both the notice of appeal, as well as the statement setting out the grounds of appeal were not filed in due time, the appeal is inadmissible (Rule 101(1) EPC).

Order

For these reasons it is decided that:

1. The request to refer the question of law to the Enlarged Board of Appeal is rejected.

2. The request for re-establishment of rights is rejected.

3. The appeal is rejected as inadmissible.