Restoration of the right of priority and the due diligence criterion

Published byBarreda Moller

The Peruvian Patent Office has opted for the “due diligence criterion” to give the opportunity of the restoration of rights. Nevertheless, as explained below, we consider that the analysis the Patent Office has been developing until now has been erroneous.

In accordance to Rule 49.6 of PCT’s Regulations -paragraphs (a) and (e)-, the general principle is to allow the applicant to obtain the restoration of rights in order to enter the national phase. The condition for obtaining it is to demonstrate that failure to comply with the time limit occurred even if the applicant acted with the diligence required by the circumstances.

1. Due diligence according to the Peruvian Patent Office

On September 9, 2013, we conducted a search in the Patent Office’s database. Out of a total of 12 decisions found using the “restoration” search criterion for years 2012 and 2013, only in three cases the request for restoration of rights was allowed:

a) In the first case, the applicant argued that failure to comply with the time limit was due to the fact that the person responsible for filing the documents with the Trademark Office was victim of the theft of the briefcase containing the documents that were going to be entered the last day for filing the application. The applicant presented the police report as means of proof.

b) In the second case, the applicant argued that the application could not be filed within the term since in the applicant’s offices two power cuts occurred which damaged the servers. As means of proof, the applicant presented an affidavit of the power supply company.

c) Finally, in the third one, the applicant argued that national phase was not entered before the deadline because its email system had a failure that prevented the receipt of the applicant’s Instructions Letter. Applicant presented a report issued by the Chief Information Officer of the Peruvian agent.

In this sense, the only three cases in which the Patent Office allowed the request for restoration of rights have in common the presence of an act of God or force majeure. Consequently, the Patent Office is confusing the concepts of act of God and force majeure with the concept of due diligence. Thus, the exposed cases are to demonstrate the wrong use that the Patent Office is doing of legal concepts.

As a consequence of such confusion as to the scope, content and legal nature of the diligence duty, the Patent Office is not doing the necessary legal analysis of the requests for restoration of rights filed by users.

Acts of God and force majeure are events that cannot be foreseen nor overcome with due diligence. Thus, we consider that an act of God or force majeure does not necessarily imply the existence of due diligence. Moreover, the existence of due diligence does not reduce the risk of error to zero; in other words, to be diligent does not imply to be exempt from mistakes.

Consequently, when the Patent Office opts to use evidence of the existence of an act of God or force majeure as proof of the existence of due diligence, not only is it denying anybody who was diligent but committed an error the right of obtaining the restoration of rights, but also unduly allowing for the restoration of rights of anybody who was not diligent.

The question that the Office must ask itself when evaluating a request for restoration of rights is not whether there exists an unpredictable event that could not be overcome using diligence but if there was due diligence in all applicant’s and agent’s preparations and acts.

2. The diligence duty

The same way the occurrence of an act of God or force majeure does not demonstrate the fulfillment of the diligence duty, the occurrence of human error is not synonym of nonfulfillment of the diligence duty.

The fulfillment of the diligence duty does not have as a consequence the complete absence of human error, it only intends to reduce such events and minimize the damages that may result from said mistakes.

In Peruvian case law and scholarly writings, it has been identified the poor development of the diligence duty in Peru. Determining the scope of the duty of diligence is not an easy task. In this regard, we believe that a decision properly rendered by the Patent Office requires first that said Office establishes which is the scope of the diligence duty, otherwise it will be impossible to demonstrate whether or not due diligence existed according to circumstances.

The European Patent System, which is also based on the principle of due diligence for the case of restoration of rights, establishes some interesting considerations. For example, a very high standard is applied to the agent or attorney for the performance of basic legal tasks such as the interpretation of the law and the establishment of deadlines to be obeyed according to law. Nevertheless, said agent or attorney is allowed to delegate the performance of said routine tasks to an assistant, and said assistant is not under the same strict standards of care as expected from the agent or attorney.

In this respect, European case law establishes that it suffices that the agent or attorney has chosen an appropriate person, has properly trained the person in the task to be performed, and has supervised in a reasonable way the tasks performed by the assistant, such as a random supervision. If the agent or attorney has complied with the due diligence duties with respect to the assistant, mistakes committed by the assistant are not attributed to the agent or attorney.

In conclusion, as we can note in European case law, it is possible to gradually establish criteria that help us to understand to scope of the diligence duty in Peru.