In this recent Board of Appeal (EPO) decision T 0858/18 (https://www.epo.org/law-practice/case-law-appeals/recent/t180858eu1.html), the Board decided – contrary to the first instance decision of the Opposition Division – that a statement of opposition grounds was not filed via facsimile in time before the end of the 9-months opposition period, and that the opposition was thus not admissible.

The statement was transmitted by facsimile on the last day of the opposition period, and the transmission was started roughly ten minutes before midnight. Unfortunately, the last page of the statement (of in total 12 pages) was received at the EPO only after midnight - in fact it must have been received less than one minute after midnight! All other pages of the statement were received in time before midnight. The pages that were received before midnight included arguments sufficient to substantiate the opposition grounds.

However, the Board concluded that generally a „document“, like this statement of opposition grounds, cannot be virtually split into a plurality of partial documents, which are received at different times. That is, in the present case into a first partial document received before midnight and a second partial document received after midnight. According to the Board, a „document“ must be taken into account only in its entirety, because only the complete document can convey the real will of the document’s author.

Notably, to the contrary, filed patent applications can be split in this way. In particular, an application can receive an earlier filing day, even if a part of the application is received on the next day. However, only if the later received part of the application is renounced by the applicant (T 2061/12 and T 2133/10).

Further, the Board concluded in the present case, that the filing day of a document must be determined by the end time of its transmission to the EPO, i.e., by the day on which entire document was received. Although an incomplete document may reach the EPO, such a document is not accorded any date of receipt because it is deemed not to have been received at all. There is no legal basis, according to the Board, for according the earlier date as date of receipt to the part of the document arriving at the EPO before midnight.

Consequently, in the present case, the statement of opposition grounds was attributed only the later filing day, and the opposition was accordingly found to be inadmissible from the outset. Notably the Opposition Division had revoked the opposed patent in its entirety in the first instance proceedings.

Practical impact:

The transmission time of a facsimile transmission needs to be taken into account when filing documents last minute. It is not enough to start the transmission before midnight, but the transmission needs to end before midnight. A possibility to reduce the risk of a too late filing may be to generate a one-page summary of the document, e.g., the statement of opposition grounds, and to label and transmit that summary page as a separate document. The summary page may be enough to, e.g., render an opposition admissible, even if the more detailed statement document is received too late. Once the opposition is admissible, also the later filed document will most likely be admitted into the proceedings.