Monday, 1 February 2010

Potential exam questions EQE 2010 - from OJEPO and PCT NL

I get asked many times what I think will be on the D exam. Most of the questions and issues will be based upon the core of the EPC, which changes little.
However, they also like to ask questions based on things that have been published and changed “recently”.

These "recent changes" can be found in the OJEPO and PCT Newsletters of 2008 and 2009. It does take sometime to go through them,but you learn a lot by reading them and deciding what is relevant.You should read these and take them with you to the exam. Note that many of these OJEPO notices/decisions are also provided in the appendix to Jelle Hoekstra’s book.

It is dangerous to make predictions, but from all the "recent changes", the following seem the most important and most likely to be asked:
  1. the EPC changes of 1/4/09 (especially OJ 2009, 118)
  2. G1/05 & G1/06 (OJ 2008, 271)
  3. G1/05 Interlocutory decision (OJ 2007, 362)
  4. G2/06 (OJ 2009, 306)
  5. the decisions of the Board of Appeal indicated below,especially T1178/04
  6. London Agreement (National Law Table IV) (OJ 2008, 123)
  7. Newest EPC states (NO, HR, MK, SM) (OJ 2007, 531/OJ 2007, 637/OJ 2008, 507/OJ 2009, 396
  8. Oral proceedings (OJ 2009, 68)
  9. Electronic filing (OJ 2009, 182)
  10. Filing priority document (OJ 2009, 236)
  11. Filing by reference (supplying copy) (OJ 2009, 486)
  12. Search & exam fees (OJ 2007, 642 / 2008, 12  / 2008, 521 / 2009, 96 / 2009, 99)
  13. PCT agreement (OJ 2007, 617 / 2009, 206)
  14. PCT changes of 1/1/09 and 1/7/09 (see below)
  15. Also, there may be something on filing by reference R.40(2),(3) in general, because it was supposed to be in the DII 2009, but they took it out. This EPC2000 change has not yet been asked.
  16. Another thing not yet tested is the 2nd sentence of R.134(1). This actually happened in July 2009 - see OJ 2009, 79. You don't need to know this particular unavailability (they will put it on the exam calendar if required), just the general principle. 


WIPO presentations on recent changes



"Recently published" Board of Appeal Decisions:
T 439/06 - 3.5.01 - Electronic trading system/REUTERS (OJ 2007, 491)
" Re-establishment of rights (no)" - "All due care required by the representative (no)" - "Application of principle of proportionality (no)"
131 kB
T 1227/05 - 3.5.01 - Circuit simulation Infineon Technologies (OJ 2007, 574)
" Computer-implemented method with mathematical steps for simulating the performance of a circuit subject to 1/f noise - technical character (yes)"
" Undefined technical purpose - adequate for clarity (no)"
163 kB
T 154/04 - 3.5.01 - Estimating sales activity / DUNS LICENSING ASSOCIATES (OJ 2008, 46)
" Requirement of invention -- method, main request (no)" - "Requirement of invention -- method, auxiliary request 1 (yes)" - "Inventive step -- system, main and auxiliary requests 1 to 3 (no)" - "Amendments -- claim 1, auxiliary requests 4 and 5 (inadmissible)" -"Remittal for further prosecution (refused)" - "Referral to the Enlarged Board of Appeal (refused)"
252 kB
T 1178/04 - 3.3.09 - Enzyme additives for ruminant feeds/HER MAJESTY THE QUEEN IN RIGHT OF CANADA, REPRESENTED BY THE DEPARTMENT OF AGRICULTURE AND AGRI-FOOD CANADA (OJ 2008, 80 and GL D-I, 4)
" Purported new opponent a 'party to proceedings' (yes)" - "Admissibility of purported opponent's appeal (yes)" - "Ruling on transfer of opponent status a 'decision' of the Opposition Division (yes)" - "Proprietor adversely affected by decision (no)" - "Proprietor not adversely affected by decision prevented from presenting arguments relating to validity of transfer of opponent status (no)" - "Reformatio in peius (not applicable)" - "Validity of transfer of opponent status (no)" - "Remittal to Opposition Division (yes)" - "Reimbursement of appeal fee (no)"
213 kB
T 263/05 - 3.2.06 - Laser welding/HONDA GIKEN KOGYO K.K. (OJ 2008, 329)
"Novelty and inventive step of one independent claim and its dependent claims (yes)" - "Amendments prohibited by Rules 57a or 29(2) EPC (no)" - "Amendments to description (allowed)" - "Amendment of a party's case to introduce a new line of argument in appeal proceedings after filing of reply (not allowed)" - "Extent of duty of board of appeal to examine claims ex officio (Article 114(1) EPC)" - "Extent of power of Board acting ex officio under Article 111(1) EPC to remit a case to the opposition division" - "Remittal of case to opposition division (no)" - "Requests to record matters in minutes (refused)"
409 KB
T 1093/05 - 3.5.01 - Multiplier circuit/Infineon Technologies (OJ 2008, 430)
"Interpreting a decision to grant a patent" – "Correction of a decision to grant a patent (no)" – "Amendments after the communication under Rule 51(4)"
125 KB
J 10/07 - 3.1.01 - Subsequent filing of drawings/AMAZONEN-WERKE (OJ 2008, 567)
"Transitional provisions of the EPC 2000" - "Subsequent filing of drawings not contained in the original application; re-dating of the application (no)" - "Substantial procedural violation (yes)" - "Reimbursement of appeal fee (yes)" - "Protection of legitimate expectations"  
217 KB
J 3/06 - 3.1.01 - transitional provisions/HEITKAMP (OJ 2009, 170)
"Applicability of Rule 56 EPC to filings made before its entry into force - no" - "Valid claiming of priority - no" 
90 KB 
T 307/03 - 3.3.07 - ARCO/Double patenting (OJ 2009, 422)
"Principle of prohibition of double patenting - applicable under EPC (yes)" - "Later claim more broadly formulated - double patenting prohibition applicable (yes)"
92 KB
T 1063/06 - 3.3.10 - Reach-through claim/BAYER SCHERING PHARMA AKTIENGESELLSCHAFT (OJ 2009, 516)
"All requests: reach-through claim - chemical compounds defined in functional terms - future inventions also claimed - limiting claim to actual contribution to art both reasonable and imperative - invention cannot be carried out within the entire scope claimed without undue effort - research programme"
110 KB


2 comments:

  1. Thank you for this information, but please note that the links to WIPO presentations on recent changes do not seem to work?

    ReplyDelete
  2. Thanks for commenting - they should work now.

    ReplyDelete