Standard of Due Care in Patent Prosecution Matters

The 10th Senate of the Bundespatentgericht, responsible i.a. for appeals against decisions to refuse a request for re-instatement of rights in patent prosecution matters has raised interesting questions on the standard of due diligence in our field.

In general civil law, the rule established by the case-law is that the exercise of due care by the responsible attorney requires that upon deleting a time limit for one procedural step, the attorney should also check that other inter-related time limits in the same file are correctly noted.

In an earlier decision (10 W[Pat] 5/05 “Dreidimensionale Daten”, headnote here), the Senate had argued that this rule can be transferred to cases of  re-instatement of rights in patent prosecution matters only in certain parts.

The rule applies in particular for time limits pertaining to legal remedies such as appeals, wherein a longer delay for filing the grounds of appeal is considered to be interrelated with the delay for filing a statement of appeal. Failure to check the correct notation of the delay for filing the grounds upon deleting the delay for filing the statement of appeal is generally considered incompatible with due diligence.

However, the 10th Senate of the Bundespantentgericht had found that this requirement cannot be extended to each and every delay in a patent application procedure, where the number of more or less independent delays is considerably higher than in a general civil procedure.

In the case “Dreidimensionale Daten”, both a translation of the documents as originally filed and a copy of the priority document had to be filed within the pertinent delays respectively. When filing the translation, the attorney had not remarked, that the deadline for filing the priority document had not been correctly noted, and the DPMA had rejected the request for re-instatement by arguing that the obstacle (failure to note the time limit) would have been remarked at this earlier stage if the responsible attorney had exercised all due care required by the circumstances.

The Bundespatentgericht did not follow this argument by pointing out that a causal relationship between the two limits does not exist, and that the number of delays to be monitored in patent application procedures is considerably higher than in general procedures for legal remedies.

In the recent decision 10 W (pat) 22/09, this question has come up again. The Senate points out that a limited duty (“eingeschränkte Pflicht”) exists to check a file with regard to the correctness of calculations done upon noting the delays according to his  instructions. The reason is that the high number of delays to be noted and monitored would lead to excessive requirements. According to the senate , the attorney should be exempted from activities in relation to the deadline-management and checking in the interest of his activities dedicated to the administration of justice (“im Interesse seiner der Rechtspflege gewidmeten Tätigkeit”).

The question which kind of specific indications ("Anhaltspunkte") are sufficient to trigger the duty to double-check the noted deadlines is still to be clarified. In the case at issue in 10 W (pat) 22/09, this threshold finds its organisational counterpart in the question which degree of irregularities in the normal process flow should give rise to a duty of office clerks to notify the responsible attorney.

As this point of law has not yet been clarified by the highest courts, a leave to appeal on this point of law was granted.