Two important decisions have come to our attention this year relating to restitution of an Application that has been deemed withdrawn or has lapsed. In the first case, T840/94 (Union Camp Corporations / Akzo N.V.), the Appeal had been filed out of time because the representative had been earlier informed by the Applicant company that they no longer had interest in the case and that no further costs were to be incurred. Based on previous experience dealing with these particular Applicants, the representative took no further action and forwarded no more documentation to the Applicants. The Applicants only ascertained that the case had lapsed when they attempted to pay a renewal fee. Subsequently, they contacted the representative, ascertained that the case had been lost and filed a request for restitution arguing that the date of the removal of cause of non-compliance was when the Applicants had determined that the Application had lapsed by the return of the renewal fee payment.

The Technical Board of Appeal did not agree with this. They stated that the date of removal of cause of non-compliance was the date on which the representative became aware that the loss of rights took place. Particular arrangements between the Appellants and the representative are of no interest to the European Patent Office and, if a party to the proceedings is notified of an action and decides not to take notice of that information, that party cannot thereafter rely on the fact that they had no knowledge of matters necessary for continuing the proceedings.

Of as much importance to our overseas associates is the unpublished Legal Boards of Appeal Decision J3/88 (Applicant not recorded). In this case, an error leading to the lapsing of a European Patent Application took place in the offices of a U.S. Patent Attorney who had been appointed by the Applicant to instruct European and other Attorneys worldwide. The error was made by a docket clerk employed to record the progress of the Application and monitor forthcoming dates.

For restitution of an Application to take place, the Applicant must be shown to have taken all due care. It is a long established principle of the European Patent Office that the same burden of all due care falls upon a European representative appointed to represent an Applicant. In this particular Decision, however, it is specifically stated that, with regard to "all due care", the U.S. Patent Attorney must be regarded as an agent of the Applicant and, therefore, the U.S. Patent Attorney had the same duty of due care required of an Applicant for or proprietor of a European Patent or their European representative. Equally, docket clerks, regarded as assistants of the U.S. Patent Attorney, whilst not required to have the same standards of care as a professional representative, must have been carefully selected, properly instructed and reasonably supervised.

It is vitally important that, if a European Patent Application lapses due to an error in the office of a professional representative who is not a European representative, that the representative can be shown to have taken all due care in the monitoring of the case and in his actions. In this respect, a standard approach of the European Patent Office towards restitution of the case is to determine whether or not the error was an isolated error in an otherwise satisfactory system.