Initially, developing countries have shown some hostility towards the idea of implementing the TRIPS agreement that sets the minimum standards to be followed for intellectual property protection. However, in order to keep pace with the developed countries. With time passing, intellectual property right has started to grow at a booming pace around the globe; with big companies filing hundreds of applications every year, it is difficult to keep track of all the due dates that need to be met in order to avoid deemed abandonment of intellectual property. Thus, the concept of intellectual property management was developed over time.
Intellectual property management is a system that helps in managing intangible creations of the human intellect (IPs). It circumscribes various tasks, including keeping track of different due dates. A good intellectual property asset management also includes an analysis of competitors and involved risks of missing the due dates. It can help the company’s long-term commercial objectives.
Intellectual property rights are territorial rights in nature. They have a fixed term that requires zero error in applications filing and prosecuting, renewal every year and then within the set time or due date. When we look at the number of obligations a patent application has to go through, there is a need for intellectual property managers, and patent docketing becomes even more significant.
Let’s talk about the Patent annuities in Switzerland their due dates are very important, likewise in all the most important countries, and if you miss them, it will be very difficult to reinstatement them. For example, here, “Reinstatement may be requested where the applicant, through no fault of his own, has failed to comply with a time limit during the international phase or before the Office. Reinstatement is excluded, however, where the missed time limit is the time limit for requesting reinstatement. The request for reinstatement must be presented within two months after the removal of the cause of non-compliance with the time limit but not later than one year from the expiration of the time limit, which has not been observed. Within these two months, the omette act must be completed, the reinstatement fee (see Annex CH.I) must be paid, and a statement of the facts on which the request is based must be furnished”.
For European patent applications, “Re-establishment of rights may be requested where the applicant lost any right because, in spite of all due care required by the circumstances having been taken, he was unable to observe a time limit during the international or the national phase. An application for re-establishment must be filed in writing within two months from the removal of the cause of non-compliance with the time limit(s) but not later than one year from the expiration of the time limit(s) which have not been observed. Within the said two months, the omitted act(s) must be completed, the respective fee(s) for the re-establishment of rights (see Annex EP.I) must be paid, and the request must state the grounds on which it is based and must set out the facts on which it relies. However, the re-establishment of rights is ruled out in respect of any period for which further processing under EPC Article 121 is available. See Guidelines for Examination in the EPO, E-IX, 3 for more details”.
The present article attempts to become an eye-opener for businesses and individuals venturing into intellectual property rights to take intellectual property managers more seriously and understand the consequences and risk of missing important due dates.
Objectives of Intellectual Property Docketing and role of Intellectual Property Manager
- A simple management of documents cannot help companies move past the antiquated view of intellectual property management. In order to compete well, companies need to manage their intellectual property assets immaculately.
- It is essential to shake hands with sound technologies and databases. Intellectual property management is a substantial task. Too much paperwork can make intellectual property management difficult as it involves integrating a cohesive intellectual property strategy involving many departments in a business.
- To put it more simply, an organized way of approaching intellectual property can benefit businesses. For example- an efficiently labelled record can save time and avoid errors. That’s exactly what Patent docketing means.
- A good and well-coded database will automatically generate alerts in the organization to meet the deadlines. Docketing becomes an essential requirement in patent prosecution as immaculately organized records of a particular patent can help in making one’s case stronger before the Controller or Judge.
Risks related to Intellectual Property rights management and consequences of missing due dates
There are various risks related to intellectual property rights management if not executed properly. Now a question arises as to why there is a need for proper management of intellectual property assets (specifically, patent docketing). Intellectual property managers have to be very vigilant about managing filing dates, renewal dates, priority dates, appeal dates, PCT guidelines, country-specific requirements, affidavits etc. Let’s list down the potential risks and damages thereof that can lead to the extinguishment of intellectual property rights altogether of an applicant.
- Forgoing important deadlines prescribed in the provisions of law related to different intellectual properties can cost the owner or the business (Applicant) heavily. Sometimes the company’s entire worth can be put at risk of complete loss in the form of costs and penalties.
- To illustrate this as an example, let’s go through the restoration of patents. There is a need for establishing before the Patent Office that all due care was taken in order to keep the patent in force. Jumping renewal dates can make applicants go through unnecessary litigation and face the fear of the loss of a patent at the end of the tunnel. Thus, it should be clear that this leads to unnecessary litigation. While managing intellectual property, it is essential to receive intellectual property due date alerts for colleagues and clients (s).
- There is a need for mitigating such risks through Technology. The hassle one has to go through is not worth anyone’s time. There is also a possibility that the Patent diminishes in its value in the market due to its ceased status.
- Various other contractual obligations can be affected, such as license agreements. If the patent ceases, then the very spine of such agreements are broken.
- The intellectual property managers themselves can get dragged into unpleasant litigation like it happened with one of the UK’s leading patent attorney firms “Carpmaels &Ransford”. It is essential to discuss this case in order to give a full-fledged idea about the unpleasant risks involved with regard to IP management and docketing failures. The same will be discussed in the next section after introducing the concept of “Restitutio in Integrum” under the European Patent Convention (EPC). Thus, the aspect of getting stuck in litigation can affect not only the applicant but also the intellectual property managers.
- One more point to be noted is that no alternate dispute resolution is available in such cases. Arbitration, mediation etc., cannot help. Thus, litigation is the only way one can get back their intellectual properties (or patents if it has lapsed).
Restitutio ad Integrum- A “remedy” to lapsed patents or a “scare” to Intellectual Property managers
The plain meaning of this phrase is “Restoration to original condition”. This principle has a variety of representations in different jurisdictions (such as “restoration of lapsed patents”). However, it is well established in the European Member States. It is interesting to note that this principle gives rise to punitive damages that need to be paid in order to restore a patent under the EPC.
This principle is engraved under Article 122 of the EPC. This article lays down that in order to re-establish the rights of a European patent holder, one needs to show that “All Due Care” was taken and still the applicant or his representative was unable to observe “time limit vis-à-vis the European Patent Office”. Therefore, when we peruse the structure of the Article, we come to the realization that the re-establishment of the patent holder’s right under Article 122 means the re-creation of the same situation as it was before the time limit was exceeded.
The standard of “All due care” is extremely stringent under the EPC, thus giving force to our above stance that “restoration of patent holder’s rights” is an unpleasant terrain that intellectual property managers must avoid venturing into.
In the case of a Chemical Company named BASF against their own patent attorney is an interesting example of the above stance. The fir missed the application’s EPO appeal deadline due to an error committed by Carpmael’s records department. As stated before, EPO has very stringent re-establishment criteria. As it turns out, the firm was still reliant on paper files and not any databases at the time.
The case took an intriguing and rather an unusual turn when the Patent attorney for the application who committed the error stated that BASF’s patent was invalid anyway. Thus, the revocation of the patent was an inevitable result which would have taken place had the Appeal had taken place. This indicates a peculiar situation where the firm argued against the patent application that they once defended. In the end, the settlement costs were pretty high.
In another decision where applicant Polynovo Biomaterials Pty Limited missed the deadline for the renewal fee, their case came under the scrutiny of Art. 122 of the EPC. However, they were awarded restoration as the error of non-payment was counted as an “isolated mistake”, as the onerous standard of “All due Care” involves that there is no gross negligence committed by the parties, and they all acted in good faith.
Equivalent provisions and overall take on “Restitutio ad integrum” other jurisdictions
The Dutch Patent Code also has a similar principle on Restoration under their Article 70. However, this provision provides a broad foundation to patent rights holders to request damages in case of an infringement to restore the patent to the same condition if the infringement didn’t take place. So the principle of restoration is not just limited to lased patents due to non-payment of the renewal fee.
Article 68(2) of the Unified Patent Court Agreement (UPCA) also incorporates this principle. However, the quantum damages, if not punitive in nature, which is unlike Art. 122 of EPC. The proportion of the measure taken in the form of damages if important consideration for the UPC.
Similarly, Recital 26 and Article 13(1) (a) of the Enforcement Directive lays down that unfair profits made by a particular infringer is an appropriate aspect to be considered during calculating damages. Thus, this is an important aspect of the restoration of IP when an appropriate case if placed before the Court of Justice of the European Union (CJEU). The CJEU, in fact, established this point in the Jorn Hansson case.
Conclusion: It is clear from the above discussion that the best advice and lesson learnt is not to miss any dates and deadlines during the application or prosecution process of any intellectual property and especially in Patents. We observed that authorities are not always forgiving. They are not supposed to be because, as the provisions and conventions are stringently structured, their legislative intent is clear that “restoration provisions” are not remedies but meant to be a hassle that needs to be avoided. The loss of an intellectual property asset due to a “silly error” is unwelcomed.
It shall be appreciated that the standard of “All due care” has been so onerous, even in practice. However, we believe the discretionary power of Controllers could be tied down a bit as good inventions may disappear from the market due to a “recording error” of the intellectual property manager. Even databases may not be able to enamel such assets from the risks of lapse or termination.
The Carpmael’s case is an epitome of the fact that mistakes can actually cost a lot. The firm, however, escaped narrowly due to some good arguments and the fact that the “revocation case” was in appeal and not in process. The patent was not in existence at all. However, the decisions rendered by the various Judiciary were correct and well interpreted. Let these be a lesson for all intellectual property managers out there, so there is an increase in their vigilance.
The importance of handling official intellectual property due dates and to be reminded in time is the scared part of our intellectual property work, and this may be, anywhere and at any time, resolved using the free, safe and easy web tool https://www.ipduedates.com which sends automatic e-mail notifications to whom and when you desire.
IP docketing and risk of missing official due dates are a common requirement and risk for all IP (patents, trademarks, designs, domain names, licensing agreements, etc.) and these may all be inserted in IP Due Dates categories (“Miscellanea” is provided and then in the notes the user may write some info for their internal use).
Also all intellectual property Law Jurisdictions (not only for EP or CH but also EUIPO, US, IN, ZA, etc), renewals but also granting fees, publication fees, proof of use for marks, etc. are very important for intellectual property managers therefore also these may be handled in intellectual property Due Dates.
Official Due Dates but also Internal Due Dates may be inserted so that these last ones may be considered as an internal reminder (for colleagues and/or Client) to start working on that file, etc.
- Definitions.net, ‘Restitutio ad integrum’ https://www.definitions.net/definition/restitutio+ad+integrum
- European Patent Convention, 17th edition  OJ EPO 6/2016, art. 122(1)
- Case No. T 0942/12, https://www.epo.org/law-practice/case-law-appeals/recent/t120942eu1.html
- Rijksoctrooiwet  BWBR0007118, art. 70
- Agreement on a Unified Patent Court  OJ EPO 5/2013, art. 68 (2)
- F. Gafaggi P. Iamiceli, ‘The Principles of Effectiveness, Proportionality and Dissuasiveness in the Enforcement of EU Consumer Law: The Impact of a Triad on the Choice of Civil Remedies and Administrative Sanctions’
- European Parliament and Council Directive 2004/48/EC on the enforcement of intellectual property rights  OJ L195/16, recital 26, Article 13(1)(a)
- Case C-418/14 Jorn Hansson v. Jungpflanzen Grünewald GmbH  ECR I-419
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.