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.
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