CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 480/21 – Malfunction oft the EPO's Online Filing software when it came to paying the opposition fee

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The patent relates to filling devices, systems and methods for transferring hazardous waste material in a sealable container.

Brief outline of the case

The OD decided that the opposition was deemed not to have been filed for lack of payment in due time of the opposition fee.  

The potential opponent appealed this decision.

The board decided that the opposition fee was considered to be filed in time.

The case was remitted to the OD for further prosecution.

The case is interesting as it involves the ADA system.

The opponent’s point of view

The opponent attempted, on the last day of the opposition period, to file a notice of opposition using EPO Online Filing software. This transmission failed.

The opponent then filed a notice of appeal by fax, including a copy of the online opposition form 2300E, still on the last day of the opposition period. The fax comprised a request for debiting of a deposit account, for the payment of the opposition fee. The EPO did not carry out this request.

A further, successful request for payment of the opposition fee was made on the day after the expiry of the opposition period, using the EPO online payment system via web payment.

The opponent suggested the following alternatives:

  • the online filing on the last day of the opposition period had not actually failed, so that the debit request it contained was valid;
  • point 5.5 ADA provided for an extension of the payment period; and
  • the filing of the debit order by fax could be corrected as an obvious error under R 139.

The opponent’s first argument was that the debit order must have been received at the EPO within the opposition period, and was thus filed in an electronically processable format within the meaning of point 5.1.2 ADA, for the following reason:

  • a digital signature could only be validated if the receiver had received the entire signed document
  • the digital signature on form 2300E, which included the debit order, had been validated using the Online Filing software. Only after a successful validation did the notice receive the status “ready to send” and only then could the transmission of the notice of opposition be started.
  • this meant that the entire form 2300E, including the debit order in an electronically processable format, must have been received by the EPO during the validation of the digital signature, in agreement with point 5.1.2 ADA.

The opponent requested an extension of the period for payment of the opposition fee under the first sentence of point 5.5 ADA.

The proprietor’s point of view

The proprietor was of the opinion that the means of redress under 5.5 ADA was not applicable.

Exceptions were generally to be interpreted narrowly, and especially so in this case. This meant that the mere possibility that filing problems were attributable to the EPO was not sufficient for an extension of the payment period under 5.5 ADA. Rather, the opponent had to produce convincing evidence that the error was at the EPO. This was not done by the opponent.

Had the unavailability been at the EPO, meaning on the premises of the EPO or its servers, more users would have experienced problems, and the date at stake  would have been included in the list of temporary unavailability.

Hence, for these reasons alone, an extension under point 5.5 ADA was not applicable. The opponent should have used an up-to-date software and other means of payment.

The proprietor also cited T 858/18, deviating from decisions T 2061/12 and T 2317/13, in which the board decided that what matters in case of a fax transmissions is the date and time when the last page was received.

The board’s decision

The board was not convinced by the opponent’s first line of arguments.

According to the EPO online filing user guide, the user is informed of a successful transmission of the complete opposition form, including the payment information, only after a successful transmission to the EPO server.

The appearance of an error message without confirmation of the transmission means that form 2300E, including the debit order, was not validly submitted to the EPO.

A successful digital signature alone, irrespective of what data might be exchanged with the EPO server, does not mean that the debit order was received by the EPO.

The bord confirmed the OD’s finding that the debit order was not received at the EPO in an electronically processable format within the regular opposition period until 22.05.2019, but only in the form of a fax.

The payment made on the following day came too late.

Without a remedy, the legal consequence would be that the notice of opposition would be deemed not to have been filed.

In point 5.5 ADA, the following is stated: “If a payment period expires on a day on which one of the accepted means of filing debit orders is not available at the EPO, the payment period is extended to the first day thereafter on which all such means as are available for the type of application concerned can be accessed again”.

The board examined the events associated with the unsuccessful filing.  

The board came to the following conclusions:

(a) The software was most likely installed on a system that was set up properly.

(b) The Online Filing software was working properly until the last step of transmission to the EPO.

(c) The software was operated by highly experienced users.

(d) The internet connection to the EPO was most likely working at the day and time in question.

(e) The version of the Online Filing software used was accepted for such use, but was known to have problems.

The Board was thus persuaded that it was far more likely that the cause of the malfunction was in the Online Filing software, whether on the representative’s computer or elsewhere.

The Online Filing software, in various versions, are accepted means of filing a debit order. This software is issued and maintained by the EPO. The board had no doubt that the general functioning or malfunctioning of the software was attributable to the EPO.

The board also held that the responsibility of the EPO is not limited to its premises and servers. The board found it nevertheless difficult to draw a sharp line, where the responsibility of the EPO for a malfunction ends. The board agreed with the proprietor that the mere possibility that the malfunction is attributable to the EPO is not enough.

In the present case, however, the evidence strongly suggests that the software was correctly installed and used on compatible electronic systems. This means that the malfunction was most likely attributable to the EPO. Consequently, the means of filing a debit order using the Online Filing software was not available “at the EPO” within the meaning of point 5.5 ADA.

Hence, the payment period was extended under the first sentence of point 5.5 ADA to at least the next day on which he payment was successfully made.

For the board, T 858/18 had no bearing on the present case, because there was no unavailability of a means of filing. It therefore missed the crucial point of the present case.


Although an opponent is not a party to a procedure before the EPO before the opposition is deemed filed, and later admissible, the board decided on the balance of probabilities in favour of the opponent. However, the odds were prima facie more against as in favour of the opponent.

It is important to note that

  • the responsibility of the EPO is not limited to its premises and servers
  • the mere possibility that the malfunction is attributable to the EPO is not enough to extend the delay for payment of the opposition fee.

In G 1/86, OJ 1987, 447, the EBA decided that Art 122 opened to opponent as appellant, but only for the time limit for filing grounds of appeal and not for the time limit to file the notice of appeal.

The opponent can thus be very happy about the board’s decision. The proprietor is certainly less happy.

In our nice digital world malfunction of links or software are common place.

It might thus appears wise not to wait the last day for filing an opposition, but at least file it within the working time of EPO’s customer’s services.  

Last but not least, the present decision appears to be valid for other actions before the EPO involving the payment of a fee by electronic means, e.g. filing of the notice of appeal or the request for examination.


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