Monday, 12 March 2012

Our answers to DI 2012

Based on input from 3 legal tutors, we think the core part of the answers should be as follows. A real answer would probably require additional comments for full points - anyone think that we are missing something?

Q.1 [5 marks]
•    Correction R.140 permitted by EPO of own motion – G8/95
•    Correction is retroactive – e.g. T212/88.
•    Decision and its notification keep original date.
•    So appeal period expires 27/12/11 + 10d + 2m => 6/3/2012 = TODAY [Art.108, R.131(4)]
•    File appeal + pay appeal fee (RFees 2(1).11) today – Art.108.
•    If withdrawn before end of 4m (7/5/2012 Mon) and before filing grounds: refund of appeal fee R.103(1)(b): still 2 months, so client can use the few weeks he needs to decide.

Q.2 [6 marks]
•    Amended R.36 entered into force 1/4/2010.
•    Transitional provision: if 24m expires before 1/10/2010: could file new div until 1/10/2010.

•    DIV1 (14/12/2009):
-    old A.76, R.36(1): pendency of parent EP1 ; old R.36(2): in language of proceedings = EN
•    DIV2 (30/9/2009):
-    R.36(1)(a): 13/12/09+24m already expired; so could file until 1/10/2010: OK
Parent EP1 was pending (G1/09)
-    R.36(2): in language of proceedings or EP1 filing language =EN
•    new div: EP1 and DIV2 no longer pending – R.36(1), G1/09. R.36(1)(a) expired.
•    DIV1 still pending. New R.36(1)(b) not triggered by partial search report, so cannot be validly filed.
•    If examination requested and non-unity maintained in the first R.71(1) communication, will have at least 24m to file new divisional out of DIV1 (or until end of pendency of DIV1).

Q.3 [5 marks]
•    file SIS request with IB – PCT R.45bis.1(a). 5/10/10 + 19m => 5/5/12, so still possible
•    Request EPO=SISA R.45bis.1(b)(ii), OJ 2010, 304
•    Pay SIS fee (RFees2(1).2) and handling fee (PCT SoF 2) to IB – R.45bis.3 (a)+(b) and R.45bis.2(a)
o    within 1m (R.45bis.3(c), R.45bis.1(a))
o    after filing request
•    File translation into EN, FR, or GE – R.45bis.1(c)(i); OJ 2010, 304, Art.3(4)+ Annex E(1)
•    SIS will be performed on claims as filed, R.45bis.6 so cannot amend; request EPO to search second invention, R.45bis.1(d)

Q.4 [4 marks]
a) No
•    A1 not in EP-X: late filed claims must have basis in application as filed under Art.123(2) [GL A-III 15]; species A1 cannot be based on genus A ]
•    A1 is in PCT1 as filed
•    No valid priority – A.87(1) - for EP-X in EP-phase (not same invention): is 17/11/2010
•    In EP-phase, document is Art.54(2): A1 not novel
•    Then A1 in EP-X, and priority valid. So novel and patentable.

Q.5 [5 marks]
•    AG-IP 9.004; PCT Art.21 + R.48
•    Application (CN)
o    including claims as filed (CN)
•    A.19 amendments (CN) – claims as amended
•    A.19 statement (CN)
•    R.48.3(c): also in English: ISR (was available), title, abstract, text in the abstract figure(s)
•    yes – via website: AG-IP 9.020, R.86(2)(a)

Q.6 [6 marks]
•    Priority only claimed from IT1 with inv1, priority valid, effective date: 28/10/10
•    Publication of doc D is too late [Art.54(2)], inv1 claim is novel

•    Inv2 not disclosed in Inv1, so effective date inv2 claim: 28/10/11
•    So D1 novelty-destroying A.54(2) for inv claim 1, unless we can claim priority of IT2

•    16m period for adding prio-claim to IT2 expired 28/2/12 – R.53(2). R.131(4)
•    So too late for R.53.
•    Exceptionally, it may be possible to request R.139, 1st sentence correction
•    Techn.prep. R.67(1) will be completed 28/10/10+18m = 28/4/12 – 5w => 31/3/2012 (OJ 2007, SE3, D.1).
•    So have time to correct and EPO has time to include a warning in publication (GL A-V, 3)
•    So can still do – need to satisfy EPO that mistake was made – J6/91 (based on same date and unity, obvious should have claimed prio in subsequent application)

•    If priority added: inv2 has f.d. IT2, D1 not A.54(2) and inv2 claim=novel.

Q.7 [4 marks]
•    Diagnostic methods may be excluded from patentability – A.53(c) – if they comprise all steps: deductive decision phase, data collection and analysis (tissue sample in analysing liquid); interactions with human body (biopsy) – G1/04 hn4.
•    So it could be patentable if method of diagnosing did not include the deductive decision phase.

•    Diagnostic method is certainly excluded from patentability if it includes step which can be seen as a surgery [G 1/07 hn.2a]
•    Biopsy of the liver is an invasive surgical method = extracting tissue sample from liver entails substantial health risk, even if carried out by the medical practitioner indicated – G1/07,hn.1.
•    Taking tissue sample is not essential - Art.84, so biopsy step can be left out of claim, and the method would not be excluded (it would be patentable)
•    This also removes the human body interaction step, so exclusion under G1/04 is made impossible

Q.8 [5 marks]

•    Improved subject-matter not in EP1 as filed, so its inclusion in EP1 violates Art.123(2) => no valid protection via EP1 possible

•    Improved subject-matter is in EP2 as filed, so no Art.123(2) problem for EP2

•    As EP1 already published (on 10/3/10), response to OA became publicly available shortly after submission (in June 2011) - Art.128(4)- and therefore A.54(2) against EP2 (filed 9/12/2011).
•    So, novelty destroying => no valid protection via EP.


  1. Thanks a lot for posting! Good to see I got the right idea in many of the questions. Hope I wrote it down correctly to earn enough ponints..

  2. Thanks Pete for your answers. It appears that I have written almost all of your core part of the answers as my real answers in the exam.

    For Q5, A55(4) and R86.1(i) PCT state that PCT Gazette having abstract would be published in French (R86.2(a) PCT).

    For Q6, I additionally cited a J decision which stated that a change in mind is not a criteria to add/correct priority, in particular if the addition/correction of priority due to relevance of state of art. What do you think?

    1. Q.5: R.86.1(i) indeed seems the appropriate legal basis specifying that the Gazette publishes the abstract (R.86.1(i)=abstract; R.86.2(a)=in Fr).

      Q.6: Which J-decision do you refer to? J6/91, r.3 seems to require that true intent is required, and change of mind is not acceptable.
      Also, J9/91, r.5 in my opinion only relaxes the burden of proof, but it maintains the true intent requirement.

  3. How do you think answers to questions will be marked?



    1. Marking is mainly at a resolution of 0.5 marks. So, for a 4-mark question you need 8 items; most of those also need a legal basis.
      Our answers probably cover at least 75% of the items. We have given most relevant legal basis. We have avoided giving a complete answer and complete legal basis because we might give some items which are not required and you might feel you missed it.
      Usually there are some bonus marks too.

  4. Q6 explicitly states that "Inv1 and Inv2 are unitary". I thought they want a comment based on that statement.

    I could not come up with anything better than "Try to amend to an inventive concept supported by IT1 as originally filed, which also covers Inv2?"

    1. I guess that a remark may be required, e.g. Inv1 and Inv2 are unitary, but not the same. Claim on Inv2 in EP1 now not entitled to priority based on IT1 which only discloses Inv1 (not same invention-G2/98).

    2. This also made me wonder. I remarked that since Inv1 and Inv2 were unitary, they might also be equivalents under A69 and in that case inv2 would be covered by inv1.

    3. In itself true, but seems to me a bit too speculative. Do not expect that this was required in the answer.

  5. Will you publish some comments on D2 as well?

    1. Yes, we will shortly. Finished it; we are now reviewing it.

  6. Hi Pete,

    In Q5, isn't the "A.19 statement about the amendments" published in English or French, whatever language was used by the Applicant? It's correspondence to the IB after all, so Rule 92something applies. Or at least that's what I wrote down.

    I think this bit was in one of the recent Legal Advices, including a Chinese example (but I'm too lazy now to look it up).


    1. While I'm on the topic, I would like to go on record as stating that in my opinion, Q5 is a horrible horrible horrible question, which has nothing whatsoever to do with the question of whether the candidate is fit to practice in front of the European Patent Office.

      In fact, I see it as a new low mark in the continuing search of the D exam committee for more and more obscure nooks and crannies of patent law in the hopes that they stumble on something that's not easily found in reference books. This is getting ridiculous.

      What's more, this question also unfairly favours German candidates, since they will know from practice what PCT applications filed and published in German look like. German and Chinese are equivalent in that they are both PCT publication languages but not official languages used by the IB.

      And I'm not just complaining because I answered this question badly! Well, just a little bit maybe.

  7. "...Q5 is a horrible horrible horrible question, which has nothing whatsoever to do with the question of whether the candidate is fit to practice in front of the European Patent Office."

    Exactly. I think I managed to dig out most of the required info by rooting around in the AG, but really, how is this question in any way a test of fitness to practise?

  8. small error for Q6: it should be R.52(2) not R.53(2) for adding priority claim, alright?