Risk Update

$1.25b IP Dispute — Deadline Missed, Docketing Error, Records Oversight, Paper Files, and PR Fallout

Hat tip to my IP expert colleague Chris Kave for flagging this one (make sure to read until the end): “Carpmaels & Ransford sued for missed appeal deadline” —

  • “One of the UK’s leading patent attorney firms is facing a claim brought by their client, chemical company BASF. BASF is suing Carpmaels for a reported €1.05 billion, because of a missed EPO appeal deadline.”
  • “The EPO has stringent criteria for allowing requests for re-establishment. Re-establishment requires a party to show that they used ‘all due care’ to meet the relevant deadline (Article 122(1) EPC) (IPKat). The requirement for ‘all due care’ to have been shown applies to the applicant/patentee, their representative, and even none European patent agents (IPKat). For the ‘all due care’ requirement to be fulfilled, patent attorney firms must show that the failure to meet a deadline was as a result of an isolated mistake in an otherwise well-functioning system (Case Law of the Boards of Appeal, III-E-5.4).”
  • “The request for re-establishment was submitted by the Carpmaels patent attorney responsible for the case. The patent attorney had been a partner at Carpmaels for over quarter of a century, during which it was submitted, he “had never missed a due date for filing a Notice of Appeal or any other critical deadline before the EPO”. Shortly before the incident with the appeal deadline, the patent attorney had retired. To manage the hand-over of work, the attorney continued to take some responsibility for a certain number of cases as a consultant and only visited the office occasionally.”
  • “Carpmaels argued that the missing of the appeal deadline was an isolated error in an otherwise ‘extremely reliable system.’The EPO sent the minutes of oral proceedings and the revocation decision relating to the case stapled together, with the minutes of oral proceedings in front. Importantly, it is the revocation decision that sets the appeal deadline, not the minutes of oral proceedings. The Carpmaels records department did not notice the revocation decision and thus no appeal deadline was docketed. The responsible attorneys did not notice the mistake, and it was BASF who themselves contacted Carpmaels about the appeal deadline after noticing the decision on the EP register. Carpmaels were then instructed by BASF to work on a statement of grounds of appeal. Still, however, the appeal deadline was not docketed.”
  • “Importantly at the time Carpmaels was still reliant on paper files. The retired partner ultimately responsible for the case was predominantly working away from the office and relied on documents that had been emailed to him by BASF and not the physical file. The attorney therefore failed to spot that the documents received by Carpmaels from the EPO had not been processed correctly by the records department. The retired partner was also travelling at the time the appeal deadline came due and only noticed that it had been missed on his return.”
  • “The Board noted the failure of the record department to cross-check the incoming mail, the failure of the attorney responsible for signing the delivery receipt to properly review the documents, and the failure of the responsible retired partner to double-check the appeal deadline whilst he was working on the statement of grounds.”
  • “Carpmaels’ admit to missing the appeal deadline. Their argument in defence to BASF’s claims is that the patent was clearly invalid anyway, and that the decision of the opposition division to revoke the patent would have been upheld by the Board of Appeal. Carpmaels have therefore placed themselves in the rather unusual position of arguing against the validity of a patent they once defended.”