J 0002/25 - (II) On online filing problems and burden of proofs

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.

J 0002/25 - (I) A remedy for a late-filed divisional

Key points

• The title is not an oxymoron. 
• The answer is the principle of protection of legitimate expectations, first prong: users can rely on communications from the EPO. In the case at hand, a Notice from the EPO indicated that, in the event of the type of IT issue that happened the night before, there would be no adverse consequences for the applicant.
• "If a public authority such as the EPO issues a promise or statement on how to act in a given area, the principle of legitimate expectations requires that promise or statement to be honoured unless there is good reason not to do so (J 10/20, Catchword)."; see also G 2/97 r.4.1, first sentence.
• The current Board: "It would constitute a disproportionate and unjustifiable burden to the users of the European patent system if they could not rely on the publications by the EPO and if they could lose rights irreversibly when doing so."
• "At the same time, it cannot be disregarded that the principle of protection of legitimate expectations does not give carte blanche to the person relying on it, so that parties in proceedings before the EPO must act in good faith (G 2/97, Reasons 4.2; R 4/09, Reasons 2.3.2; T 861/12, Reasons 4.5) and must take all necessary procedural actions to avoid a loss of rights (J 3/24, Reasons 3.2.3 citing J 4/23)." 
• "The Notice concerning the procedures and safeguards applicable in the event of outages of means of electronic filing has been published on the EPO's website and in the Official Journal of the EPO (OJ EPO 2020, A120). It is therefore clearly a source of legitimate expectations"
• " Not every expectation held by a person is automatically a legitimate one within the meaning of this principle. It must be an expectation on which a person could, on an objective basis, legitimately rely (e.g. J 4/23, Reasons 2 and 4). The Board finds that in the present case, on an objective basis, it was reasonable for the appellant to have relied on the information provided in the Notice and it is reasonable to assume that the appellant was misled by it."
• The Board orders that "2. The communication noting of loss of rights pursuant to Rule 112(1) EPC of 10 January 2024 is set aside and the application EP XX XXX XXX.X filed on 29 November 2023 is processed as a divisional application. 
• Before the appeal decision, the legal status was that "European patent application EP XX XXX XXX.X was not processed as a European divisional application". For that reason, the application was not published (it seems), and the appeal decision is published in anonymised form.
• There is more to the decision; stay tuned! 

EPO 

The link to the decision is provided after the jump.

J 0010/25 - (II) Correcting the drawings in limine

Key points

• The Receiving Section sent an invitation under Rule 58 to correct the drawings on 10.10.2024, with a two-month time limit.
• "The appellant did not respond within the time limit under Rule 58 EP"
• The Receiving Section issued a refusal decision on 22.01.2025, but  "it was not possible [for the EPO] to prove that this [decision] had been delivered to the [applicant] "
• This is an application of Rule 126(2), second sentence. 
• " The appellant then filed the following drawings: A set of drawings filed on 19 March 2025"
• On 01.09.2025, the Receiving Section issued the (appealed) refusal decision.
• At that time, the corrected drawings were on file. Could the refusal decision still be issued?
• J 11/20: "The deficiency having been remedied late and no [request for re-establishment] having been filed, the Receiving Section was empowered to issue the refusal decision at expiry of the time limit given under Rule 58 EPC (see in particular J 1/18, Reasons 5)."
• Is an appeal sensible?  Yes: J 11/20:  "as clarified in decision J 18/08 (Reasons 4 and 6), when an application is refused under Article 90(5) EPC, if an appeal is filed against such a refusal, the board of appeal has to examine whether the deficiency noted has been corrected or not. Thus the deficiency on which the decision under Article 90(5) EPC is based can be corrected at the appeal stage."
• Interlocutory revision should have been granted, assuming that the new drawings are formally correct. J 11/20: "The practice of the Receiving Section, based on this procedure and following the cited case law, has been to rectify its decision refusing an application under Article 90(5) EPC, if an appeal is filed and the deficiency is remedied at the appeal instance ..."
• It seems that you can file the drawings shortly after the time limit set under Rule 58, but that you can only file the appeal and pay the appeal fee once the refusal decision is issued. Normally, however, that does not take long.
• In this case, the Board does not decide on whether the drawings are acceptable and/or whether they are correctly repaired with the appeal, but remits the case to the Receiving Section for procedural reasons (see the previous blog post). I infer from this choice of the Legal Board of Appeal that it wished to make its point about the Receiving Section's use of standard forms. 
  
  
• As a result, the application, presumably filed on 22.05.2024, has not yet been published (as of August 2026), and the decision of the Legal Board of Appeal is published in anonymised form. I wonder whether, if you wish to keep an invention secret for more than 18 months and only desire a European patent, you can use deficiencies in the drawings to delay the publication. 

EPO 

The link to the decision is provided after the jump.

J 0010/25 - (I) Correctly followed the procedure, still SPV

Key points

• In this case, a European patent application was filed with formal deficiencies in the drawings. The Receiving Section issues a communication under Rule 58; no reply is received within the period of two months, and the Receiving Section issues a decision refusing the application using the appropriate form 1088 (https://link.epo.org/communications/F1088E_07.19_en.pdf) that contains, in relevant part:
• 
  
  
  
• The Legal Board sees a substantial procedural violation in a very short decision.
• "4. The Decision [of the Receiving Section] is ambiguous: the defect could be that the deficiencies noted in the communication dated 10 October 2024 were either: "Not corrected in due time"; or "Not properly remedied". The decision leaves open whether refusal was based on non-observance of the Rule 58 EPC time limit or on an assessment that the subsequently filed drawings still failed to meet Rule 49 EPC. Thus, the decisive ground remains unclear. This violates Rule 111(2) EPC (reasoned decision) and deprives the appellant of effective judicial reasoning. This ambiguity thus constitutes a substantial procedural violation. "
• The Legal Board's point is this, I think: the EPO is not precluded from issuing a reasoned, written decision, i.e. a decision with written case-specific findings and legal reasoning. The choice of the EPO President to prescribe the use of forms to the officers staffing the Receiving Section does not derogate from Rule 111(2) EPC. In other words, Form 1088 as such should be reconsidered. 
• When we are at it: why does the form include the following list of tick boxes? 
• 
  My theory is that it originates from when the forms were pre-printed in batches, not printed on demand with an inkjet printer. A typist would take a printed form (i.e., one sheet of paper pre-printed with the fixed text of the form), tick the relevant box from the list, and type (with a mechanical typewriter) the application number, etc., in the appropriate empty spaces on the form. Comments are welcome, however.  
• My view is that any form with a list of check boxes is outdated, or at least old-fashioned. Communications from the EPO should no longer contain text that does not apply to the case concerned. 
• There is more to this decision. Stay tuned!
  
  
• 
  

EPO 

The link to the decision is provided after the jump.

T 0665/24 - Non-obviousness of arbitrary values (?)

Key points

• Inventive step is at issue. The claim is directed to a drill component and recites: "characterised in that: the quotient Ls/Dy is equal to 0.4 or 0.45". This is a ratio of some length to a diameter.
• The TBA: "the appellant [opponent] has still not convincingly demonstrated that the second distinguishing feature, namely the quotient feature, is obvious. The board accepts that paragraph [0010] of the patent in suit does not associate a specific technical advantage with the claimed values 0.4 and 0.45 over other values. However, this merely serves to determine the formulation of the objective technical problem as the provision of an alternative percussion drill component."
• "The appellant argues that the quotient feature constitutes a mere arbitrary selection from a host of possible solutions or a selection from obvious alternatives [including ] those obtainable through trial and error."
• "The board disagrees because the case law cited by the appellant operates on the premise that a defined host of solutions or obvious solutions, all of which equally suitable candidates for solving the objective technical problem, are available to the skilled person. This premise is not satisfied here. The appellant has not identified any piece of prior art in which the claimed quotients (Ls/Dy = 0.4 or 0.45) are disclosed or suggested."
• "In the absence of any such disclosure, there is no basis for treating these specific values as members of a defined host of alternatives or obvious solutions accessible to the skilled person.
• "The appellant's arguments that the host of possible choices includes those obtainable through trial and error and that any modification to the drill bit of D8 would be obvious due to the minimalistic objective technical problem of providing an alternative drill component remain a mere unsubstantiated allegation."
• "Accordingly, the board concludes that the appellant has not demonstrated that the distinguishing quotient feature is obvious in the light of the available prior art."
• For completeness' sake, the opponent argued that the CPA  document, D8, disclosed a quotient Ls/Dy of 0.568. The application as filed disclosed a range of 0.4 - 1.0.
• "paragraph [0010] of the description of the patent in suit, according to which no particular technical effect is associated with the quotient Ls/Dy being equal to 0.4 or 0.45, as now claimed, in comparison with the other quotients of the range 0.4 to 1.0 disclosed in the said paragraph"
• Compare: "Another aspect of obviousness which is not readily answered by the PSA is illustrated by the 5¼ inch plate paradox. This runs like this. Suppose the patent claim is for a plate of diameter 5¼ inches. And suppose no-one can find a plate of that particular diameter in the prior art. Then (a) it is novel and (b) it is non-obvious for there is no particular reason to choose that diameter. The conclusion, that the plate is patentable, is so absurd that it cannot be so", to cite Lord Justice Jacob "having a lengthy stab at the EPO-style problem-solution approach" in Actavis vs Novartis, and "and arguably getting it wrong", according to David Pearce, IPKat 17.02.2010."
• I wonder what the commercial value of the patent is. Perhaps there is a kind of "must fit" situation for the drill bits at issue such that any "generic" drill bit must exactly match the Ls/Dy ratio specified in the claim, even if the recited value is otherwise an arbitrary choice. Evidently, patent law has no exception for "must fit" spare parts (compare Regulation (EU) 2026/715 , article 9(2) for registered EU designs).
• 
  
• EPO 

The link to the decision is provided after the jump.

T 0913/25 - Rule 63

Key points

• The Examining Division refused the application inter alia on the ground of Rule 63 - lack of a search because "it was impossible to carry out a meaningful search".
• The Board, in translation:  "Rule 63(3) EPC deals with the procedural consequences of the applicant's failure or inadequacy to file a statement in response to the invitation. It does not allow the absence of a search report to be transformed into an independent ground for refusing the application. Where, at the examination stage, it appears that the claimed subject matter or part thereof is amenable to a useful search, it is normally for the Examining Division to order ( "faire effectuer") a further search"
• Rule 63(3): "When a partial search report has been drawn up, the Examining Division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified."
• Note, the provision does not deal with the consequences of not responding to the invitation.
• Perhaps Rule 63(2) and the invitation of Rule 63(1) were meant. 
• The Board finds that the claims are clear and also have sufficient basis in the parent application. Hence, the Rule 63(3) invitation was not justified. 
• "Neither Rule 63(2) EPC nor Guidelines B-VIII, 3.2.2 provide, in the circumstances of this case, a legal basis for refusing any search once the applicant has identified searchable technical subject matter. These provisions cannot be applied in such a way as to deprive the applicant of any examination of the patentability of identifiable claimed subject matter, except in cases of a genuine and duly justified impossibility of carrying out a meaningful search."
• Note that Rule 137(5) EPC, second sentence, provides that amended claims may not relate to "subject-matter not searched in accordance with Rule 62a or Rule 63." 
• The purport of this rule, as applied to Rule 63, is not entirely clear to me. If the amended claim relates to subject-matter that is not searched under Rule 63, it must suffer from a serious defect under one of the other requirements of the EPC that makes a meaningful search impossible. Isn't that underlying defect then the proper ground for rejecting the amended claims? 
• The original OJ notice (OJ EPO 2009, 299) is unhelpful, which is unsurprising since the provision was introduced as part of the "raising the bar" initiative of the then EPO President (Ms Brimelow). Any suggestions from readers are welcome. 

EPO 

The link to the decision is provided after the jump.

T 1372/24 - Second non-medical method claim (?)

Key points

• Is the preamble of a method claim limiting if it recites a technical effect? I.e., is the method anticipated by a prior art disclosure of the active steps of the method? What if the claim preamble recites a purpose that is not an implicit further limitation of the method?
• Claim 1 at issue: "A method of reducing spotting on dishware during automatic dishwashing, the method comprising the step of subjecting the dishware to a wash liquor comprising [a certain compound]"
• There is also a second non-medical use claim (claim 10). 
• D2 concerns biodegradable complexing agents and their use in products such as dishwashing detergents. The method is the same as in the patent, but D2 does not mention the effect of reduced "spotting". 
• "The board came to the conclusion that, in the present case, novelty is established by the purpose-related features alone.  "
• According to the opponent, "a reduction of spotting was inevitably achieved when dishware was subjected to a wash liquor free of phosphate and dispersant polymer and comprising at least 700 ppm MGDA. Therefore, as set out in T 1931/14 (point 2.2.4 of the Reasons), the stated purpose had no limiting effect on the method claim. 
• See my blog post about T 1931/14. The case is followed in the GL (F-IV, 4.13.3 "On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, this technical effect has no limiting effect on the subject-matter of the claim."
• "However, the board does not agree with this for the following reasons. 
• "the board does not follow the approach taken in T 1931/14 "
• The Board observes that under G 2/88, the purpose provides novelty for use claim 10 (this seems correct to me). 
• The Board: "The same applies to method claim 1. The Enlarged Board of Appeal regards use claims and method claims as belonging to the same category, namely claims to a physical activity (G 2/88, point 2.2 of the Reasons). Whether one and the same teaching is expressed as a method of reducing spotting (claim 1) or as a use for the reduction of spotting (claim 10) is merely a question of wording and not of substance. There is therefore no reason why the considerations developed in G 2/88 and G 6/88 for use claims should not also apply to method claim 1."
• The TBA could have cited G 5/83 r.11: "The European Patent Convention, in general, allows both method claims and use claims but whether any activity is claimed as a method of carrying out the activity (setting out a sequence of steps) or as the use of a thing for a stated purpose (the sequence of steps being implied), is, in the opinion of the Enlarged Board, a matter of preference. For the European Patent Office there is no difference of substance. In the context of the present case" (and for that reason,  Art. 53(c) EPC is not escaped by rephrasing a medical method claim as a use claim). 
• G 2/88: The TBA does not cite the part of G 2/88 that deals with novelty of use claims and the limiting effect of a recited purpose for such claims. That part of G 2/88 speaks only of uses of known compounds, not of methods (The key part is in r.9: " In relation to a claim whose wording clearly defines a new use of a known compound, depending upon its particular wording in the context of the remainder of the patent, the proper interpretation of the claim will normally be such that the attaining of a new technical effect which underlies the new use is a technical feature of the claimed invention. ").
•  R. 2.2 of G 2/88, cited by the TBA, in fact states a terminology that the EBA did not adopt in G 2/88 ("There are basically two different types of claim, namely a claim to a physical entity (e.g. product, apparatus) and a claim to a physical activity (e.g. method, process, use). These two basic types of claim are sometimes referred to as the two possible "categories" of claim. In this decision [i.e., G 2/88], however, the word category is used to refer generally to the various different possible classifications of claim. "
• See also CLBA I.C.8.1.3.

EPO 

The link to the decision is provided after the jump.