Key points
- The PCT application was filed by a USA law firm 5 days after the expiry of the priority year.
- " 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 firm's] 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."
- The facts: "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 appellant 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 [note the passive voice; I understand by one and the same paralegal] , and no further patent application was filed before the one-year deadline."
- The Board: " 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. 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 request for restoration of priority is refused.
- The name of the law firm can be found in the decision. According to Wikipedia, it has 1000+ attorneys.
- The applicant tried some creative arguments. "the appellant 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." The Board: "This line of argument is not convincing either. 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 considers 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."
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/09/j-000821-no-proper-cross-check-at-1000.html
