T 0195/25 - Partial priority and the shield effect of priority (?)

Key points

• The Board, in the headnote: "When a claim of a patent enjoys partial priority for a specific embodiment, the same embodiment disclosed in a non-patent document published in the priority year cannot be used as starting point for an inventive-step attack against the subject-matter of the claim that does not validly claim priority".
• Compare G 3/93: "1. A document published during the priority interval, the technical contents of which correspond to that of the priority document, constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent such priority is not validly claimed. 2. This also applies if a claim to priority is invalid due to the fact that the priority document and the subsequent European application do not concern the same invention because the European application claims subject-matter not disclosed in the priority document."
• Hence, the headnote in T 195/25 is surprising because it appears to introduce the 'shield theory' of priority, which was rejected in G 3/93 (as I understand that case). 
• See my blog post of 01.09.2017 (link). 
• See also T 2466/13, issued in 2018, wherein, in translation: "The chamber uses [priority] document Prio01 as a starting point to examine the inventive step of subdomain B of claim 1.") (link)
• Turning to the case at hand, D12 is the PhD thesis of one of the inventors and was published during the priority year, 
• The present Board: " The appellant considers the examples in PhD thesis D12, ... an alternative starting point for assessing inventive step. "
• "Since D12 was published after the filing date of D11, D12 has no impact on the priority date of the patent.
• "However, when a claim of a patent enjoys partial priority for an embodiment, the same embodiment disclosed in a non-patent document published in the priority year cannot be used as a starting point for an inventive-step attack against the subject-matter of the claim that does not validly claim priority.
• This is a new statement of the law, I think.
• "3. ... It has not been contested that the priority is at least partially valid (see G 1/15), i.e. as far as the examples of the patent are concerned 
• The examples are the same between the priority document and the application. Implicitly, the examples are also embodiments of the claim under examination.
• Importantly, the cited examples in D12, the PhD thesis, are the same as in the priority document.
• "In the case in hand, the subject-matter of the examples of non-patent document D12 does not belong to the state of the art within the meaning of Article 54(2) EPC since D12 was published after the priority date of the patent (see point 3. above)."
• This statement departs from the established case law.  Under G 1/15, the priority is "entirely" valid for one part of the claim and "entirely" invalid for the other part of the claim, just as when the claim explicitly recites two alternative embodiments, one with priority and one without ( G2/98)
• The Board: "4.3 This finding is in line with the principles of e.g. T 2073/22 (Reasons 9.6.3 and 9.6.4), T 1482/21 (Reasons 2.4.2) and T 211/06 (Reasons 4.1 and 4.2)."
• Let's check the references.
• T 2073/22: ", the board notes that, as pointed out by the respondent, the appellant explicitly stated in its grounds of appeal (page 30, point 10.96) that it "made no inventive step objection to phenols specifically".  ...  " Therefore, D1 is prior art under Article 54(3) EPC for the subject-matter of claim 1 as granted objected to by the appellant. ". The Board did not examine the patentability of the other subject-matter of the claim of its own motion.
• T 1482/21: "in view of the Board's conclusion on the partial validity of priority as set out above and the limitation of the claimed subject-matter in the new auxiliary request to subject-matter for which priority can be validly claimed...  D24/D27 are not prior art for this subject-matter, since they were published after the filing date of P1 and P2."
• T211/06: "the starting points applied to in the decision under appeal for the purposes of Article 56 EPC are based either on internal art or on a practice argued by the examining division to be known to the skilled person, for which there is no evidence on file that it was available to the public before the priority date." "According to the impugned decision another starting point was based on a so called "laboratory practice" or "common industrial practice" ...  "There is however no evidence on file at all that this "laboratory practice" was made available to the public and concerns state of the art under Article 54(2) EPC. This would be using a subjective starting point, which cannot be objectively assessed, since it is not based on reliable technical information based on evidence as required by Article 54(2) EPC. "
• None of the three cited decisions seems to address the point or support the present Board's position.
• The present Board: "By contrast, T 307/22 (Reasons 3.4.1, 3.4.4 and 3.5.4 to 3.5.5) concerned an embodiment disclosed both in D7, a document published in the priority year, and in priority document D8. It held that the embodiment of D7 could be used as the starting point for assessing inventive step. This is not indicated in the circumstances of the present case. For the reasons given above, only the subject-matter of the prior art within the meaning of Article 54(2) EPC can be used for an inventive-step attack."
• See my post on T 307/22.
• The current Board's remark that "This is not indicated in the circumstances of the present case" seemingly means that T 307/22 is wrong because the current Board analyses the effect of priority differently. 
• The present decision does not refer to G 3/93.

EPO 

The link to the decision is provided after the jump.

T 0712/24 - Change preliminary opinion OD

Key points

• The Board provides an extensive analysis of when, in the Board's view, an OD has discretionary power to hold a submission inadmissible. The Board reaches a conclusion that differs from a (key) statement in the GL. It took me some time to appreciate the decision.
• The decision is in German, and I had to clean up the HTML publication (excess line breaks) before the machine translation went well. 
• The proprietor is the appellant and objects to the decision of the OD to hold AR-1 (and 2) inadmissible. The proprietor filed those requests during the oral proceedings before the OD. The proprietor argues that the requests should have been admitted, "because [the OD's] preliminary opinion on novelty had been favourable to the patent proprietor and [the OD] had changed its view on this matter during the oral proceedings". AR-1 changed the device claims into use claims. The patent was granted with only device claims. The use claim concerns the use of the device "zum sexuellen Stimulieren eines Bereichs im Inneren einer Vagina".
• The OD held the requests inadmissible "for lack of prima facie allowability in view of Article 53(c) EPC".
• "The Board ... notes that ... auxiliary requests 1 and 2 ... were intended to overcome the objections of lack of novelty over D2 and D3, which had already been raised in the notice of opposition."
• Accordingly, the proprietor's rights under Article 113(1) EPC were not in issue. 
• However, the proprietor argued that the ARs were not "late filed" in the meaning of Art. 114 (and Rule 116) such that the OD had no power to hold them inadmissible.
  
• I think that Article 123(1) is the relevant provision for amended claims; see e.g. T 966/17, but the current Board gives reasons why it referred to Article 114(2) EPC. Amended claims were seen as 'facts' in earlier decision T 1776/18 (with the same legal member; from 2022), and my comments on that decision can be found here - link. 
• The Board, in translation: "The prerequisite for discretion under Article 114(2) EPC is that the submission in question is “late”. "
• The Board: "Whether a submission is late within the meaning of this provision depends exclusively on the point in time at which it was made. In opposition proceedings, objections and evidence submitted or filed by an opponent after expiry of the opposition period under Article 99(1) EPC, as well as sets of claims or evidence filed by a patent proprietor after expiry of the period under Rule 79(1) EPC, are generally to be regarded as late-filed within the meaning of Article 114(2) EPC"
• Note that the Board's phrase "within the meaning of this provision" (i.e., Art. 114 EPC) implies "without regard to Article 113(1)".   
  
• Understood that way, I can agree with the Board's statement (see my post on T 098/19), leaving Rule 116 aside for the moment.
• The Board:  "The reason why a party made a submission only after the aforementioned points in time is irrelevant to the question of whether the deciding department of the European Patent Office has discretion. The question whether a department has discretion within the meaning of Article 114(2) EPC must be distinguished from the question of the criteria according to which that discretion is to be exercised and how those criteria are to be applied in an individual case".
• "Considerations as to whether new submissions were, for example, permitted as an immediate reaction to a change in the subject of the proceedings are irrelevant to whether there is discretion as to admissibility; they concern exclusively the question of how that discretion is to be exercised"
• This confirms that the Board considers that the OD has a "discretion", even if a decision to hold the submission inadmissible violates Article 113(1) EPC (namely in the case of an "immediate reaction to a change in the subject of the proceedings"). This makes sense under the separate treatment of Article 113(1) and Article 114(2). 
• In the case at hand, the OD changed its view on novelty during the oral proceedings and decided that D2 was novelty-destroying.
• The Board: "in the predominant recent case law of the Boards, a change in the Opposition Division's preliminary opinion is not, in itself, regarded as a reason why the Opposition Division should have no discretion when admitting newly filed sets of claims" (after an extensive review). 
• However, the Guidelines state that E-VI, 2.2.2 (current version, 2026): "the examining or opposition division departs from a previously notified opinion: for example, contrary to its preliminary opinion set out in the annex to the summons, the opposition division concludes during oral proceedings that an objection prejudices the maintenance of the patent.  In these examples, a request for amendment made by the applicant or proprietor in response cannot be rejected as late-filed."
• "The Board points out, pursuant to Article 20(2) RPBA, that the interpretation of the EPC adopted in the present decision differs [from the] Guidelines for Examination, point E-VI 2.2.2.  ... In the Board's view, the statements in point E-VI 2.2.2 of the Guidelines concerning Rule 116(2) EPC and the existence of discretion as to admissibility of the Opposition Division are contrary not only to the present decision but, as explained above, also to the predominant recent case law of the Boards."
• The passage in the Guidelines interprets Rule 116(2), second sentence, as it refers to Rule 116(1), fourth sentence, in particular the final clause thereof: "New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed." 
• A question is, therefore, whether the passage in the GL correctly interprets Rule 116.
• In fact, the issue is twofold: (1) whether a change from the preliminary opinion is a change of the subject of the proceedings in the sense of Rule 116, and (2) whether, for any change of the subject of the proceedings (the GL give more examples), the OD is obliged to admit new facts. 
• Question (1) is answered above: "a change in the Opposition Division's preliminary opinion is not, in itself, regarded as a reason why the Opposition Division should have no discretion when admitting newly filed sets of claims"
• The travaux préparatoires to Rule 116 can be found, effectively, in the Notice in OJ 1995 p.409. The Notice says that "The procedure under Rule71a is described in more detail in revised Guidelines E-III, 6 and 8.6." (see here for the GL text as of 1995). The statement "the examining or opposition division departs from a previously notified opinion" was not yet included in the GL then. It was included in the GL 2007, E-III 8.6, referring to T 273/04, r.5 (2006). The reasoning in that decision is plain and simple. 
• Regarding point (2), the Board is of the view that the GL interpret Rule 116 incorrectly: "Rule 116(2) EPC ... does not restrict the discretion available to the Opposition Division under Article 114(2) EPC (see T 1776/18, Reasons 4.7.8)."
•  The Board does not seem to give substantive reasons for that conclusion in the present decision, other than by referencing T 1776/18 (same legal member)
• I commented on T 1776/18 before (link). Cited point 4.7.8 is about Rule 116(2). The relevant reasoning about Rule 116(1), fourth sentence, is in point 4.6.8: "the word "admitted" expresses the exercise of discretionary power, and the phrase "on the grounds" indicates a criterion for exercising this discretionary power. Rule 116(1), fourth sentence, EPC thus confirms that a change in the subject of the proceedings must be taken into account by the Opposition Division in the course of exercising its discretion." 
• That reasoning in T 1776/18 seems to address question (2). As I understand it, the TBA reasons that the word "admitted" assumes the existence of a discretionary power (also) in the event that the subject of the proceedings has been changed. This may be correct if we understand "discretionary" as "to be exercised in compliance with Article 113". 
• The French version of Rule 116(1), fourth sentence, seems the most helpful: "De nouveaux faits ou preuves présentés après cette date peuvent ne pas être pris en considération, à moins qu'il ne convienne de les admettre en raison d'un changement intervenu dans les faits de la cause." - unless it is appropriate (my translaton of  'convienne' ) to admit newly submitted facts because of a change in the circumstances of the case; the term 'convienne' more clearly permits using a plurality factors to determine whether it is appropriate to admit the newly asserted facts. 
• The Board notes that: " Point E.VI.2.2.2 states that amendments filed before the point in time specified in Rule 116(1) EPC generally cannot be regarded as late-filed."
• A third question is whether the Board's view, that "Rule 116(2) EPC ... does not restrict the discretion available to the Opposition Division under Article 114(2) EPC", also means that GL are incorrect in stating that "amendments filed before the point in time specified in Rule 116(1) EPC generally cannot be regarded as late-filed" (and be held inadmissible?).
• This hinges on question (3): what is the status and meaning of the clause in Rule 116 that "New facts and evidence presented after that date need not be considered". Is the reference to that date in Rule 116(1), fourth sentence, first clause, meaningless, in that the situation is before and after the date the same?
• A related question is whether Rule 116 and/or the GL can limit the OD in how they exercise their power under Article 114.
• The proprietor apparently did not invoke the principle of (non) venire contra factum proprium (see, e.g., recently J 2/25).
• 
  
• On medical methods
• For the perceived issue under Article 53(c), the OD cited as evidence D2, a patent application by the current proprietor, in which the use of the device was allegedly described as therapeutic. Consultation of D2 reveals that the term 'therapeutic ' was used only when D2 summarises what earlier prior art teaches in terms of known devices. Moreover, the use of D2 - namely, the stimulation of the clitoris - seems different from that of the current claims. 
• The patent is about "a stimulation device [that] can be introduced into a human body, in particular into a vagina or a rectum, and comprises a pressure-field generating device for stimulating a region to be stimulated inside the human body" 
• The Board notes, in connection with a different auxiliary request, that "Eine therapeutische Wirkung kann bei der beanspruchten sexuellen Stimulation nicht ausgeschlossen werden." 
• Perhaps we will one day have substantive case law on the point in another case; there is enough patent litigation in the technical field at issue. 




EPO

The link to the decision is provided after the jump, as well as the machine translation.

T 0110/25 - (II) Deleting figure label violates Art. 123(2)

Key points

• The proprietor withdrew the main request after the Board had announced its conclusion that the amendment of Figure 6 (by deleting the label of the vertical axis) in the grant procedure violated Article 123(2). Nevertheless, the Board's reasons can be inferred from the decision, to a degree. 
• The Board, in translation: "39. The question of whether the deletion of the ordinate label in Figure 6 prior to the grant of the patent infringes Article 123(2) or Article 100(c) EPC or is permissible as a correction within the meaning of Rule 139 EPC and therefore does not lead to an inadmissible extension was the subject of the contested decision (point 11, pages 4 to 7) and was also raised again in the appeal."
• " In its appeal, the appellant [opponent] argued that the removal of the original ordinate label in Figure 6 violated the prohibition of inadmissible extension (Article 123(2) in conjunction with Article 100(c) EPC). Figure 6 was essential for assessing inventive step. The deletion did not serve as a correction but enabled alternative technical statements, which constituted an inadmissible technical extension and conferred an unfair advantage on the patent proprietor. The deletion eliminated the original reference of the diagram to the absolute histamine degradation capacity, but no correct indication replaced the deleted ordinate label. This enabled alternative statements in the eyes of a person skilled in the art"
• " In its appeal, the appellant argued that the removal of the original ordinate label in Figure 6 violated the prohibition of inadmissible extension (Article 123(2) in conjunction with Article 100(c) EPC). Figure 6 was essential for assessing inventive step. The deletion did not serve as a correction but enabled alternative technical statements, which constituted an inadmissible technical extension and conferred an unfair advantage on the patent proprietor. The deletion eliminated the original reference of the diagram to the absolute histamine degradation capacity, but no correct indication replaced the deleted ordinate label. This enabled alternative statements in the eyes of a person skilled in the art"
• The auxiliary request seeking to address the issue is not admitted, as it was filed late.
• "The [proprietor's] assertion that it has never been explained what new technical teaching was introduced by deleting the ordinate label in the original Figure 6 is also incorrect. As already stated several times, the appellant argued in its appeal that deleting the ordinate label in the original Figure 6 eliminated, rather than correcting, the reference to histamine degradation capacity. The bar chart without ordinate labels allows for several technical interpretations that differ from the original information because the figure descriptions on pages 10 and 19/20 are contradictory both internally and in relation to Figure 6. Specifically, the appellant argued that, contrary to their previous meaning, the groups "HIT" and "no symptoms" could be related to sensitivity, and the group "symptoms" to specificity. The respondent readily admitted that these alternative technical statements, arising from the interpretation of Figure 6, were relevant to the inventive step. However, the respondent denied these alternative interpretations of both the original and granted Figure 6, and thus also the existence of a "new technical teaching." It insisted that the original Figure 6, viewed in conjunction with the original application as a whole, allowed for only one interpretation. 
• Not mentioned, but likely highly relevant is G 2/21.

EPO 

The link to the decision is provided after the jump.

T 0384/25 - No need to adapt the description (this time)

Key points

• Board 3.3.09 on when to adapt the description, after G 1/25 (which was referred by Board 3.3.02).
• The Board finds that AR-5 is allowable. "Auxiliary request 5 only includes some of the product claims disclosed in the set of the granted claims." ... "the patent as granted includes claims directed to medical uses. "
• "paragraph [0001] sets out that the invention relates to whey protein micelles for use in the treatment or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient. "
• "The claims of auxiliary request 5 are directed to a product, which is defined by specified amounts of whey protein micelles, proteins including whey protein isolate or hydrolysed milk protein, lipids, carbohydrates and fibres."
• "A liquid meal replacement comprising whey protein micelles further comprising whey protein isolates, hydrolyzed milk proteins or any combination thereof, wherein the whey protein micelles are present in said meal replacement in an amount of at least 20 wt%. [sic] of total dry weight, comprising 25-50 wt% proteins, 10-15 wt% lipids, 25-50 wt% carbohydrates and 5-10 wt% fibers of total dry weight."
• "3.9 In the current case, the board could not identify that maintaining paragraphs [0001], [0012], [0013], [0022], [0023] and [0032] of the patent as granted unamended causes any inconsistency in the sense described above [i.e., G1/25] between the amended claims and the description. "
• "The claims of auxiliary request 5 leave no doubt, let alone a real doubt, as to what the claims mean and what falls within the claimed subject-matter. 
• "While the unamended description encompasses technical teachings and embodiments regarding medical uses, this as such is not to be considered an inconsistency within the meaning of G 1/25 and does not have to be removed from the description."
• The Board does not quote the description paragraphs concerned. I quote them below.  It seems that claim 1 of AR-5 is one of the granted independent claims, without further amendments. 
• [0001] The present invention relates to whey protein micelles for use in the treatment and/or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient. A further aspect of the invention is a meal replacement comprising whey protein micelles.
• [0012] Accordingly, the present invention provides in a first aspect whey protein micelles for use in the treatment and/or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient in need thereof, wherein the treatment or prevention does not include an additional exercise regimen, wherein the condition is muscle atrophy or sarcopenia, wherein the whey protein micelles are administered to the patient in combination with a meal, wherein the meal comprises whey protein isolates, hydrolysed milk proteins or any combination thereof; and wherein the whey protein micelles are administered to the patient in a daily dose of at least 20 g dry weight.
• [0013] That treatment or prevention does not require an additional exercise regimen to be effective. Hence, the treatment or prevention does not include an additional exercise regimen.
• [0022] The present invention pertains to whey protein micelles for use in the treatment and/or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient, wherein the condition is linked to a loss of muscle mass and/or strength. The hyper-aminoacidemia for a prolonged postprandial period of time provided by the inventive use of the whey protein micelles is most favourable for maximally stimulating muscle protein synthesis and therefore maintaining or even enhancing muscle mass.
• [0023] According to the present invention, the condition is muscle atrophy or sarcopenia. Both medical conditions are characterized by a loss of muscle mass and strength. The present invention is best adapted to providing a nutritional solution to patients suffering from either of those conditions, to reduce or stop loss of muscle mass and/or ultimately to build up again muscle mass and strength.
  
• [0032] According to the invention, the whey protein micelles for use according to the invention are administered to the patient in combination with a meal. Most meals comprise proteins from a milk, plant and/or animal source and hence upon consumption lead to a postprandial aminoacidemia increase, i.e. an elevated concentration of amino acids in the plasma of the consumer. It is now an advantage, to combine the administration of whey protein micelles in combination with such a meal. Thereby, the postprandial plasma amino acid peak resulting from the proteins present in the meal adds up to the postprandial amino acid peak resulting from the whey protein micelles which are delayed by ca. 30 min in respect to the first amino acid peak. Thereby, the overall resulting hyper-aminoacidemia is extended and prolonged in time. This in return is most favourable for maximally stimulating muscle protein synthesis, reducing muscle protein breakdown and therefore maintaining or even enhancing muscle mass.
• 
  

The link to the decision is provided after the jump.

T 0110/25 - (I) SME status

Key points

•  The Board, in translation: "the Board finds that, with regard to the basis for determining whether an undertaking is a micro, small or medium-sized enterprise within the meaning of Rule 7a(2)(a) and (b) EPC, which may file an appeal by paying the reduced appeal fee [under Article 2(1), point 11 of the Rules on Fees], an unintended gap exists following the amendments to the Implementing Regulations by decision of the Administrative Council CA/D 16/23 of 14 December 2023 (OJ EPO 2024, A3). In the Board's view, this gap should be closed in accordance with the repealed Rule 6(5) EPC, i.e., by the integral application of Recommendation 2003/361/EC."
• "SME status for a current financial year is derived from the last approved annual accounts for the previous year. Article 2 of the Annex to Recommendation 2003/361/EC provides no basis for a change in SME status during a financial year or for a retrospective loss of SME status."
• Rule 7a(6), which provides that "The eligibility criteria laid down in paragraphs 1 to 3 shall be fulfilled on the date of the payment of the fee concerned," must probably be interpreted accordingly. 
• The Board notes " an error in the German version of Article 4(2) of the Annex to Recommendation 2003/361/EC, which refers only to "the headcount or financial ceilings stated in Article 2". However, the English and French versions, which refer to "the headcount or financial ceilings stated in Article 2" and "des seuils de l'effectif ou des seuils financiers énoncés à l'article 2" respectively, make it unequivocally clear that all the financial ceilings listed in Article 2(1) of the Annex to Recommendation 2003/361/EC must be exceeded before SME status is lost. This was not the case for the applicant in the 2024 financial year.
• "Apart from that, a company only loses its SME status if it exceeds the employee threshold and/or both financial thresholds in two consecutive financial years (Article 4(2) of the Annex to Recommendation 2003/361/EC). "
• "The category of micro, small and medium-sized enterprises (SMEs) comprises undertakings that employ fewer than 250 persons and either have an annual turnover not exceeding EUR 50 million or whose annual balance sheet total does not exceed EUR 43 million."

EPO 

The link to the decision is provided after the jump.

T 1089/24 - Oral proceedings and remittal

Key points

• In reply to the written opinion of the Board, the appellant in this opposition case wrote, inter alia, that "Oral proceedings were requested, should the Board not intend to remit the case to the opposition division."
• "Oral proceedings were cancelled and the parties informed accordingly."
• The Board remits the case. 
• "6. Since the appellant's withdrawal of the request for oral proceedings [*] was made within one month of notification of the communication issued by the Board in preparation for the oral proceedings, both conditions of Rule 103(4)(c) EPC, that any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings and no oral proceedings take place, are met. Hence, 25% of the appeal fee is to be reimbursed to the appellant."
• [*] - the withdrawal of the request for oral proceedings is the modification of the request. 
• This is in line with T 2285/19. 

EPO 

The link to the decision is provided after the jump.

J 0002/25 - (II) On online filing problems and burdens of proof

Key points

• The Legal Board has a point to make about online filing methods.
• "The appellant correctly argued that the EPO strongly encourages applicants to use online services and filing tools whenever possible to benefit from the business validations and the accelerated processing of submissions that originate from these tools."
• The Legal Board:   "However, if it does so, the EPO must also have proper safeguards in place including clear information to the users about these, in order to avoid irreparable losses of rights."
• "It must also have adequate and transparent investigation means to establish and prove which means of electronic filing are actually unavailable. This is particularly important if the application of the safeguards in certain cases exclusively depends on the fact that the malfunction can be attributed to the EPO, ..."
• I assume that this also applies to current Rule 134(1), second sentence, i.e. the extension of a period in case "one of the means of electronic communication" has an "outage", to use the terminology of the EPO Notice in OJ 2020 A 120, point 14. The EPO's view, as expressed in that Notice, is that "The occurrence of such an outage is determined by the EPO's technical services [*]. Not every technical problem qualifies as an outage attributable to the EPO, so not every technical problem will lead to the extension of a period [**] under Rule 134(1), second sentence, EPC." The part in italics, [*],  is almost an invitation to the Boards of Appeal to correct: the EPO's technical services don't take decisions in patent grant proceedings (similarly to how the EPO's accounting department does not decide whether a fee is validly paid with a debit order). The second part ([**]) ties the holding of the Legal Board in this case about the filing of a divisional application to normal periods.
• Just to be clear, Notices in the OJ do not bind the Boards and are in a way just information about how the EPO interprets and applies the provisions of the EPC. In this particular case, however, the legal intention of the term "shall apply mutatis mutandis" in the second sentence of Rule 134(1) may have been to authorise the EPO to make detailed rules in a Notice (not exactly a standard way of delegation; OJ 2026 A27 requires a Decision of the EPO President as of 01.04.2027).
• The Legal Board: "Particularly because online filing means have gradually become the only available means of filing [*], as argued by the appellant in the present case, an applicant cannot be deprived of the possibility of filing an application because this has been made impossible for technical reasons, if there are no legal remedies available [**]."
• [*]  I am unsure about what the LBA means here. Filing on paper is possible, and will remain so even after 01.04.2027 (OJ 2026 A27).
• [**] This part is unclear to me. 
• " In the Board's view, the mere statement that the RS has not been made aware of any circumstances that had prevented the applicant from filing the divisional application via the EPO CUS on that date is not sufficient to rebut the appellant's facts, evidence and arguments on the lack of technical availability of Online Filing, OLF 2.0 and CUS. The RS did not indicate that the appellant did something wrong or overlooked other requirements that should have been accomplished when attempting filing the application online. Nor did it question whether the CUS had been performed correctly by the appellant."
• I think that in practical terms, the RS must include in the file some evidence that the filing method was working during the relevant period, e.g. that applications/documents in other cases (from other parties) were correctly received by the EPO during the relevant hours.
• In this respect, I don't think it is up to the EPO to prove "which means of electronic filing are actually unavailable". Rather, any negative decision under Rule 112(2) is based on a finding, substantiated by evidence, that the relevant filing method was working. 
• Because the decision is anonymised (and the application is not yet published), we don't have access to the file, and we don't know what evidence the applicant has filed regarding the alleged CUS outage. The decision mentions that "The same [error] message was received when trying to sign-in using the smart card for Online Filing 2.0 and to sign-in with the EPO Contingency Upload Service. VIII. When attempting to use two-factor authentication (2FA) for the same electronic filing methods, another error message was received."
• Note, for normal periods, Rule 134 is clear: "The first sentence shall apply mutatis mutandis if documents filed by one of the means of electronic communication [...] cannot be received". However, Rule 134 does not apply to the filing of divisional applications. The applicant therefore sought to rely on the statement in point 31 of the Notice, that "Users who are unable to file a document ... should contact the EPO's Customer Services.4 If it is confirmed that the unavailability of the service is attributable to the EPO, they will not suffer any adverse consequences." This part of the Notice does not clearly say "at least one means of electronic filing" (it is in point 12 of the Notice). The LBA judges that unavailability of one means of electronic filing is enough to create the legitimate expectation of "not suffer any adverse consequences".
• Please always check for any updates or clarifications from the EPO on the issue. 

J 0002/25

EPO 

The link to the decision is provided after the jump.