Re-establishment of rights and validation of European patents in Italy

A recent decision of the Board of Appeal of the Italian Patent and Trademark Office (PTO) has introduced a more liberal interpretation of the re-establishment of rights following a missed deadline for filing an Italian translation of a European patent in connection with validation of the patent in Italy.

Relevant provisions
On 25th January 2012 the board issued a decision granting the restoration of rights for the validation of a European patent for which the translation, required according to Article 56 of the Italian Code of Industrial Property, had been filed after the three-month time limit provided by Article 65 of the European Patent Convention had elapsed.

Article 193 of the Code of Industrial Property requires, as a condition for the re-establishment of rights, that a patent holder which has missed the three-month time limit have nonetheless exercised the “diligence required by the circumstances” when selecting a “substitute” to file the required translation. In addition, the substitute must be able to demonstrate that its practice conforms to normal professional standards, and that it maintains procedures and controls for avoiding errors. A long professional history of managing deadlines in patent portfolios along with multiple check procedures may be used as evidence of the appropriate level of diligence.

Facts
In the case at hand, the patent owner entrusted the filing of the Italian translation of one of its European patents to the patent department of a substitute which was an affiliated company of the patent owner.

The substitute used a double-check procedure for docketing and meeting deadlines for national validations of European patents. This procedure involved the following steps: 

• An employee, charged with managing deadlines for filing translations, enters the grant date in an electronic database used for monitoring such deadlines. 
• The same employee provided a second employee with a print-out of such deadlines, along with a copy of the decision to grant provided by the European Patent Office (EPO). 
• The second employee reviewed the correctness of the entered dates. 
• The second employee later received a periodic report containing a summary of the deadlines for the forthcoming weeks and attended to the required translations for national validations based on these deadlines.

In the case at hand, the first employee docketed an incorrect date. He also failed to give the second employee a print-out of the deadlines which included the incorrectly entered date. In addition, he failed to provide the second employee with a copy of the decision to grant provided by the EPO.

When the second employee later received the periodic report, the European patent was included, but with the incorrectly entered date. This employee believed that he had already checked all of the dates contained in the report and did not verify the correctness of the date. This resulted in the miscalculation of the three-month time limit for national validation and the missed deadline.

Argument for re-establishment 
The petition for the re-establishment of rights stated the following:

• The patent department of the substitute included European patent attorneys as well as an administrative division responsible for managing deadlines and for foreign filings. The personnel working in the administrative division followed strict internal guidelines. 
• The management of deadlines by the substitute was based on a double-check protocol to ensure the accurate recordal of deadlines for each activity. 
• The two employees of the substitute responsible for controlling the deadlines each had more than 10 years' experience managing deadlines. 
• The software used by the substitute for managing the patent portfolio was produced by a company that specialised in developing software for the IP sector, which had been in business for about 40 years. 
• The patent department of the substitute managed a patent portfolio of about 350 granted European patent families, most of which were validated in Italy, as well as more than 400 European patent applications. The department handled filing, prosecution, validation and maintenance activities. No loss of rights had previously occurred. 
• In this particular case, although an error hadoccurred, the procedures and controls of the substitute were appropriate. The patent owner was not negligent in selecting the substitute. 
• The service provided by the substitute to the patent owner should be considered to be of a high quality and expertise, and thus complied with the relevant Italian provisions. The present case was an isolated error in an otherwise reliable system.

These arguments were accepted and the European patent was successfully validated in Italy.

Benefits for patent owners
The board’s decision confirms that the Italian PTO has departed from the narrow approach to the re-establishment of rights which it had previously applied and which had led to the rejection of petitions for re-establishment even when the deadline for validation of an European patent was missed due to exceptional circumstances or human error not caused by external factors (eg, employee illness or fire damage to computers). The decision ultimately demonstrates the alignment of Italian law and the practice of re-establishment of rights with the approach adopted elsewhere in Europe. It provides a framework for the conditions necessary to obtain a favourable decision for cases in the future.

The board’s decision underlines the importance of: 

• The patent owner entrusting the task of validation to a substitute that has a long professional history of managing patent portfolios and is capable of proving that it can carry out the specific tasks.
• The substitute using multiple check procedures for the time limits associated with European patents and patent applications.
• The patent owner furnishing adequate evidence of the substitute's reliability and of its own internal control protocols.

In this regard, it is vital to preserve all documents regarding the instructions given to the substitute to validate a European patent in Italy, as well as documents relating to internal procedures and guidelines of both the patent owner and the substitute.