I would like to amend my original statements on both cases as a former lawyer colleague of mine, who I have in high esteem, drew my attention to the following:
As far as the circumstances underlying each case, there seems to be no contradiction between the 2 decisions at stake, at least as far as the ADA and their interpretation are concerned.
The circumstances of case T 71/21 differ from the ones underlying T 1146/20 in that the opponent had filed an automatic debit order (so-called DECA) for paying the appeal fee. The payment of the opposition fee by DECA is however excluded by the ADA: DECA is indeed only open for applicant or patent proprietor, as explicitly stated in Annex A1, Point 3.2(b).
In T 1146/20 the opponent wanted to pay the fee with a single debit order (not DECA) and indicated so in the notice of opposition. He however omitted to file his debit order in an electronic processable format, as requested by the ADA, Point 5.1.2. Until 2017 debit orders could be filed on paper, via a specific Form (Form 1010) or could be included directly in submissions as the opponent did in the present case.
Both BA examined whether a correction under R 139 would be available:
In T 1146/20, the question was whether the single debit order, which was given, could be corrected so as to be considered as having been filed in the correct format
In T 71/21 the question was whether the selected payment method could be corrected from DECA to single debit order.
Both BA came to the conclusion, in view of G 1/12 and the recent case law, that debit orders can in principle be corrected under R 139.
T 1146/20 held that a debit order is addressed to the EPO and is intended to be comprised in a document filed with the EPO, e.g. in order to initiate opposition proceedings. It can thus be corrected under R 139 provided the conditions for an error to be corrected as developed by the case law are met.
T 71/21 did not grant the correction because it considers that the opponent’s will to pay via DECA could be objectively established on the basis of the documents on file, so that there was in effect no error.
The BA, applying the well-established case law, stated that R 139 cannot be used in case of change of mind, in other words to correct the defective intention to use an unsuitable payment method, originally “fehlerhafte Willensbildung zur Verwendung einer untauglichen Zahlungsmethode”.
My apologies to the readers. I am not so acquainted with the ADA procedure, beside the fact that it is not open to paying the opposition fee. This is an explanation for my mistake, but not an excuse. I should have known better.
Referring to G 1/12, the conclusion is that debit orders can be corrected under R 139. This does however imply an important change of practice for the Office.
It means that in due time, it should be possible to pay the opposition fee via the ADA procedure. This is a good future development.
True error vs. change of mind
An important lesson is that a change of mind cannot be corrected under R 139.
This appears important in case of a declaration of withdrawal as exemplified in J 7/19, J 6/13 or J 1/11.
According to the case law of the BA it is possible to correct the withdrawal of an application under R 139. This is true even if the withdrawal has already been published in the register.
However, this correction is only possible if it meets the following cumulative conditions:
(a) the withdrawal did not reflect the true intention of the applicant that is the existence of a mistake within the meaning of R 139;
(b) there was no undue delay in seeking its correction, cf. J 04/03, point 9 of the Reasons; J 10/87, point 13 of the Reasons;
(c) third parties who might have taken note of the withdrawal by inspection of the file would have had reason to suspect that the withdrawal was erroneous, cf. J 10/08, point 12 of the Reasons; J 2/15, point 13 of the Reasons; J 8/06, point 6 of the Reasons).
The difficulty starts exactly with criterion (a): demonstrating a true error rather than a change of mind. This appears to be quite difficult, but not impossible, e.g. J 5/19.
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