In T 71/21 (28.4.2022) the board decided that the opposition fee could not be paid by automatic debit of an account and that form 1038 could not be corrected under R 139.
See my comment:
The present decision T 1146/20 (17.05.2022) takes an opposite position.
The OD’s decision
In its decision, the OD decided that the opponent’s debit order filed on the last day of the opposition period was not valid and could not be corrected pursuant to R 139 with the consequence that the opposition was deemed not to have been filed.
The OD did not allow the request for correction. It followed that the opposition division found the opposition inadmissible or not to have been filed.
However, contrary to opinion G 1/18, which was known at the date of the oral proceedings before the OD, the opposition fee was not refunded, nor was a refund announced. The decision was announced at an OP in December 2019, whereas G 1/18 was issued July 2019. The OD should have been aware of G 1/18.
The OD, while having found that the opposition was deemed not to have been filed and while this finding was announced as an order at the end of the oral proceedings, the OD rejected the opposition as inadmissible pursuant to R 77 in the decision under appeal.
The OD argued that “[a]ccording to T 170/83 a payment or a debit order is a matter of fact whereby a certain amount is transferred to and put at the disposal of the EPO”.
The board’s position
For the board, the final outcome of the opposition division’s decision – opposition not deemed filed or rejected as inadmissible – is thus ambiguous.
The decision under appeal had to be set aside alone for this reason.
The board decided not to remit and to review the opposition division’s finding that the opposition fee had not been paid in due time.
Within two months from notification of a communication pursuant to R 112(1) containing the information that the notice of opposition was not deemed filed due to non-payment of the opposition fee, the opponent/appellant requested a correction of errors in form 1038E which had been submitted via EPO Online Filing together with its notice of opposition.
With the same letter, the appellant filed a corrected form 1038E, now including, in electronically processable XML format, the authorisation for the EPO to debit the opposition fee in the amount of EUR 785 from the professional representative’s debit account.
The board considered the appellant’s request for correction under R 139 to be allowable and thus overturns the opposition division’s finding in this respect. Not only is R139, first sentence, EPC applicable in this case, but the requested correction can also be allowed.
The OD took the view that R 139 was not applicable. It held that R 139 was not a general provision and that errors could only be corrected in accordance with the legal framework in place. In accordance with T 170/83, a payment or a debit order was a matter of fact where a certain amount was transferred to and put at the disposal of the EPO. It was therefore not regarded as a procedural declaration which could be corrected pursuant to Rule 139 EPC. This was also reflected in A-X, 7.1.1 GL 2017.
The board considered the general procedure for correcting errors under R 139, first sentence, EPC to be available in the case at hand in which the error concerns the ADA debit order to pay the opposition fee using form 1038E.
As pointed out in decision G 1/12 by the EBA, R 139, first sentence, is among the provisions implementing Part VII of the EPC headed “Common provisions” (G 1/12, OJ EPO 2014, A114, point 33 of the Reasons). This provision thus generally applies to any document filed in relation to proceedings governed by the EPC, such as examination, opposition and appeal proceedings.
The board, therefore, concurred with the appellant that R 139, first sentence, is applicable in the circumstances of this case.
The board notes that this approach is also in line with more recent case law, such as decisions T 317/19 of 22 October 2019 (point 2.3.3(c) of the Reasons), J 8/19 of 29 November 2019 (points 1 to 3 of the Reasons), T 1000/19 of 20 March 2020 (points 4.1 and 4.2 of the Reasons), T 2620/18 of 19 September 2020 (point 5.1 of the Reasons) and T 444/20 of 22 January 2021 (point 2.3 of the Reasons), in all of which R 139, first sentence, EPC was considered to be applicable in relation to an ADA debit order in a document filed with the EPO to pay either an opposition or appeal fee.
The present board found that making a payment, in the form of a money transfer, was indeed the performance of an act. What triggers the money transfer, however, is to be considered separately. Pursuant to point 5.1.2 ADA 2017, an ADA debit order to pay a procedural fee from the EPO deposit account must be filed with the EPO in an electronically processable format (XML), and it can be filed, for instance, by using documents such as form 1038E.
The board noted that further decisions from around the same time as decision T 170/83 allowed a correction pursuant to R 88 EPC 1973 (corresponding to R 139 EPC) of a debit order relating to a deposit account made available by the EPO which was acknowledged or at least not ruled out (see e.g. T 152/82, OJ EPO 1984, 301, point 7 of the Reasons and T 17/83, OJ EPO 1984, 306, point 6 of the Reasons).
In any event, however, in so far as decision T 170/83 is understood to exclude the applicability of R 139, first sentence, EPC in relation to ADA debit orders in general, this approach has been superseded by the more recent case law issued in the aftermath of decision G 1/12.
The appellant’s original intention to pay the opposition fee was immediately apparent from the circumstances that a notice of opposition comprising facts and arguments together with supporting documents was filed and that it had been stated in it that “Any fee is to be charged against account [no].” Taking this information into account is in line with G 1/12, point 28 of the Reasons, which reads “the board must establish the true intention of the appellant on the basis of the information in the appeal or otherwise on file” (emphasis added). The principle set out in point (a) of G 1/12 is thus complied with.
As the original intention is immediately apparent, the principle set out in (b) does not apply here.
The error to be remedied in the case at issue is an omission, namely the omission of the ADA debit order in electronically processable XML format in form 1038E as filed on 20 June 2018. The principle set out in point (c) of G 1/12 is thus complied with as well.
For the board, the requested correction of form 1038E under R 139 EPC was allowable.
As the correction was allowed and the opposition fee paid in due time the case was remitted to the OD for examination of the opposition as to its merits.
It is surprising that a DO was not aware in December of a decision of the EBA published in July. No further comment needed.
What is however more of concern is that two boards came to exactly opposite conclusions just within a few weeks.
In T 1146/20 the board concluded that the opposition fee could be paid by automatic debit order and Form 1038 could be corrected under R 139, in T 71/21 the decision was exactly the opposite.
The board held in T 1146/20 that the application of R 139, first sentence, not allowed at the time of T 170/83, in relation to ADA debit orders was now possible as the approach has been superseded by the more recent case law issued in the aftermath of decision G 1/12, see point 6.2.2 of the reasons, last §. The board also concluded that the opposition fee could be paid by automatic debit order.
Whether G 1/12 is applicable to a procedure excluded by an administrative decision of the EPO remains to be seen.
It is worth remembering that the automatic debiting procedure may only be used by applicants and patent proprietors. It is expressly not available to other persons, in particular opponents, either in the first instance proceedings or as parties in the subsequent appeal or review proceedings. See Arrangements for deposit accounts 2019-ADA-(OJ 2019, SE 4, p 10 ff.), as well as Annex 1, Arrangements for the automatic debiting procedure – AAD-(OJ 2019, SE 4, p 22 ff.).
I am therefore more inclined to follow T 71/21 which has duly taken into account the Arrangements for deposit accounts 2019-ADA as well as its Annex 1, Arrangements for the automatic debiting procedure – AAD.
In any case it shows again that case law is diverging between boards at an alarming rate. Both boards have on the same topic interpreted G 1/12 in a completely contradictory way.
In one case the opposition has died, but in the other the opposition has been brought back to life. I would have thought that in the same situation parties should be in the same position nand treated in the same way.
That in T 1146/20 the board comprised five members and in T 71/21 only three does not give more weight to the former decision.