Wednesday, 27 February 2013

Paper DII EQE 2013

First impression: a do-able paper. Lots of small issues, many of which could be dealt with separately. Quite a few, clear questions. The knock-on effect of missing an issue or wrongly dealing with an issue also seem better controlled.

I have made a rough solution. Here it is. Welcome comments. I made it fast and will use this as an excuse if there turn out to be errors/omissions :-).
If posting a comment, please donot use "anonymous" (you may be one of many), but use your name: you can enter a name without signing in.

I will underline updates I will make based on your comments.

Jelle Hoekstra
with input from Roel van Woudenberg and Pete Pollard

Our answers (click "Read more")



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Question I Patent situation
I a) 3D protrusions
Earliest filing for this subject-matter was EP-3D of Schnell-Koch (S-K) in January 2008, no priority claimed. Serrano (Ser) had informed the invention to S-K in a letter in November 2007, before filing of EP-3D. The information was under an explicit, still on-going obligation of secrecy, so does not affect novelty/inventive step of EP-3D or any other application/patent.
The subject-matter in EP-3D (frying pan with inner surface with 3D protrusions) is in itself new and also inventive since a positive effect is achieved and disclosed (faster heating of food).
EP-3D claims ‘a frying pan with an inner surface that will heat up the food much faster than a flat surface’. The EPO refused the claim on 26-3-2012 as being unclear (‘a result to be achieved’). This seems correct. No appeal seems to be filed and the appeal period has expired.
However, S-K filed a divisional DIVI-3D from EP-3D on 1-6-2012. This is within the appeal period of EP-3D (expiring 26-3-2012 + 10 days + 2 m = 5-6-2012 (Tue)) and thus the parent was still pending and not yet finally refused. Further, in time for the 24m time limit of R.36(1)(a), as is triggered by the communication of july 2010, and thus expires (+10d+24m) in july or aug 2012 – after 5-6-2012.

DIVI-3D seems to have the same claim; this would not be patentable for the same reasons as for EP-3D. However, the claim can be amended to include that the surface has 3D protrusions. Such a claim would be new and inventive and give the broadest protection of all applications/patents.
Also EP-HEMI discloses 3D protrusions but a claim on this is not valid as explained below.
I d) Cubic
DIVI-3D also includes an additional statement according to which cubic protrusions render the food much crispier. Since no relevant prior exists this would be new and inventive. However, this statement is not derivable from the parent application which only describes the genus of 3D protrusions but is silent on the specific cubic shape and crispy effect. This matter is thus added compared to the parent, which is not allowed. It is possible that the EPO examiner spots this and raises an objection. If not, we can file third party observations bringing it to the attention of the EPO or after a possible grant file an opposition. We can wait until claims have been filed and it is clear what direction is taken. For example, if the independent claim would be limited to cubic shape, in opposition this could no longer be remedied to a broader claim. In this context, it should be noted that during examination S-K can remove this matter and the remaining subject-matter on 3D protrusions can then lead to grant.
No other application discloses the cubic shape. 
I b) Pyramidal
Only described and claimed in IT-PYR, filed on 19-8-2011, no priority claimed. No relevant publications before this date, so should lead to grant, since a clear advantage of reduced vitamin loss is disclosed.  EP-HEMI and possibly DIVI-3D may later on become a national prior right in Italy for novelty only, but they do not disclose the pyramidal shape.
Priority year is already expired. This application is also already published, no application can be filed any more covering EP/DE.
I c) Hemispherical
First disclosed in DE-HEM filed on 10-6-2009 by S-K. This application is withdrawn. On 5-4-2010 S-K filed a European application EP-HEMI claiming priority from DE-HEM. The formal aspects of priority seem complied with (same applicant, within 12 m, priority can be claimed from a DE filing with a filing date, but now withdrawn).
1st claim in EP-HEMI is on a frying pan with 3D protrusions. For this subject-matter DE-HEM is not the first application, but EP-3D is (same applicant). Priority is thus invalid. The effective date is the filing date of EP-HEMI, being 5-4-2010. EP-3D is now prior art [published in August 2009], destroying the novelty of this claim.
2nd claim in EP-HEMI relates to hemispherical protrusions. This subject-matter was not disclosed in EP-3D, but was disclosed in DE-HEMI; thus priority for this claim is valid, giving an effective date of the filing date of DE-HEMI, being 10-6-2009. No earlier public disclosure exists, and there are no relevant prior rights (not in EP-3D), so the claim is new. A clear advantage is indicated (easy cleaning, not getting encrusted), so the claim seems also inventive over the general concept of frying pans with a flat surface.

Question II Opposition
The grant of EP-HEMI was published on 2-5-2012. The opposition period expired 2-5-2012 + 9 m = 2-2-2013 (Sat) –M 4-2-2013 (Mon). The opposition was received on 1-2-2013, so on time. Opposition fee was also paid. The opposition was filed in Italian. A translation into one of the official EPO languages, DE, FR, EN, must still be filed. This is possible until 1-2-2013 + 1 m. = 1-3-2013 (Fri), which is later than 4-2-2013.
I will arrange the translation and file it.
As discussed under item I c) above, indeed claim 1 is not new over EP-3D. On the other hand, the second claim on the hemispherical protrusions is new and appears inventive.

Question III Freedom to operate
III a) Freedom to operate in DE and IT
Your two markets are DE and IT.
At this moment EP-HEMI is granted with two claims. The broad independent claim can be used to block you in selling a frying pan with 3D protrusions in general. This also can block then any specific form of that, like cubic, pyramidal or hemispherical.
EP-HEMI is validated in IT only. However, since EP-HEMI is granted after entry into force of the London Agreement EP-HEMI is automatically validated in many more countries of the first group (having as an official language one of the EPO languages).  This includes Germany. EP-HEMI was filed in April (before grant), so no national renewal is due until the end of April 2013. So, it is assumed that the patent is still valid in DE. So, you can be blocked in IT and DE.
As described above, this broad claim appears invalid, then after revocation of this claim you would be free in this respect.
The claim on hemispherical appears valid and you would then still not be free to act with such a product in DE and IT.
As described above, no patent should be granted based on DIVI-3D for the cubic shape. At this moment cubic is not claimed, so you also do not infringe under provisional protection.
S-K has no rights on the pyramidal shape.
Thus, after revocation of the broad claim in EP-HEMI you would be free to act with a frying pan with 3D protrusions, except hemispherical.

III b) Prevent competitors from selling in our two markets 
You have no broad claim, only a patent application in IT on the pyramidal shape.  This seems patentable. Since the application is already published, S-K may already infringe under provisional protection in IT. I will check if all national requirements for this are met. If not, I will execute them. It is advised to take every step to accelerate grant in IT to obtain full protection.
So you cannot stop S-K in DE at all. You can only stop S-K in Italy for the pyramidal shaped protrusions after grant.

III c) Improve positions
From the information supplied it seems clear that both EP-3D (and thus divisional DIVI-3D) and the independent 3D protrusions claim in EP-HEMI are derived from information supplied by Mr. Serrato (Ser) to S-K. Thus Ser is entitled to these rights. Based on the agreement between you and Ser, you are now entitled. The hemisperical claim appears not derived from Ser's info and cannot be claimed.
It is recommended to contact S-K, explain matters and ask S-K to transfer all rights amicably to you. In the case of the 3D protrusion claim in EP-HEMI, to irrevocably abandon this claim in the opposition proceedings. If S-K is not co-operative, I recommend that you start entitlement proceedings before national courts. If you prefer to avoid that, you can instead negotiate a free license under those rights; or even a cross license where you offer a license on your right.
For DIVI-3D you should start proceedings in DE (country of applicant). Then, according to the protocol on recognition, the outcome will be valid for all EP Contracting States.
Unfortunately, the protocol does not apply to granted patents. So, for EP-HEMI proceedings should be started in both DE and IT. You can use the confidentiality agreements and letters of Serrano as proof in te court cases. Probably Mr. Serrano can be used as a witness too. You may also decide not do start proceedings against EP-HEMI in the assumption the 3D protrusion claim will be revoked in opposition.
In both cases, we should inform the EPO as soon as possible after instigating the proceedings and provide proof of that. The EPO will suspend the grant proceedings of DIVI-3D and the opposition proceedings of EP-HEMI. After a positive outcome in the court proceedings, we should inform the EPO within 3 m. of the outcome and indicate that you wish to take over the place of the applicant/proprietor. After that the EPO will re-open the proceedings.
You will then have the broad patent on 3D protrusions and your IT right on pyramidal. You can then block S-K on all forms of 3D protrusions in DE and IT and are free to produce/sell yourself, but not the hemispherical option of EP-HEMI. You may then still consider a cross-license.
With respect to the cubic shape, this matter is public via the open file of DIVI-3D on 27-9-12 and the disclosure at the Hot Pans trade fair in January 2013. Both publications might qualify as evident abuse, and are then non-prejudicial, with respect to Ser since Ser had indicated that he wanted to file patent applications for this matter and S-K thus should have been aware of this causing harm. We can still file a patent application for it within 6 m. from 27-9-12 -> 27-3-13 and cover all EP states. 

41 comments:

  1. You should perhaps partially revise your answer. Isn't the disclosure, via divi-3D, of cubic protrusion evident abuse under A 55 1a?

    Application for cubic is still possible, whereby evident abuse disclosures are not taken into account for prior art

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    1. This comment has been removed by the author.

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    2. Did consider that, but think that Cubic protrusions were shown at the public trade fair "Hot Pans" last January. Then it is no longer new anyhow.

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    3. Thanks for posting your answer!
      I also thought that the public disclosure at the trade fair in Jan 2013 would qualify as an evident abuse under A55 and as the disclosure was less than 6m ago it was still possible to file. Why do you disagree?

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    4. Think you are right. Did it very fast, did not check who did the disclosure at the fair.

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    5. I agree that Art.55 can be used. "Continues secrecy", "letters indicated that Drf.S intended to file patent appl".
      Allows claim to CUB for ALL EPC-states in a new EP application!

      For Art.55, two public disclosures are relevant:
      1) the publication of DID-3D, which includes the CUB [008], on 27/9/12;
      2) the public disclosure at HotPan 2013 in January 2013 (later than1)).
      So, the last day to file a new EP appl claiming CUB and excusing both disclosures under Art.55(1)(a) is 6m from the publication of 27/9/12: 27/3/2013.

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  2. And EP hemi was never disclosed by seranno to S-K.
    So EP hemi, claim 2 stays firmly in the hands of S-K, who are blocked by our general 3D protection that we will get from DIVI 3D once we have taken over, if need be via a new application so that we can control which claims are filed and hopefully granted.
    A licence deal: 3D licence to S-K in germany in exchange for hemi licence for us in italy seems obvious.

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  3. You are right, Hemispherical was not told. So, claim 2 of EP-HEMI cannot be claimed under entitlement.Ownership of the main claim, which is not new, can be claimed but is not very useful then.

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  4. Have you any idea of split of points between the two parts? I think the first part (questions I-II) should be given more points than the second part (III questions), which can be done only after having performed a good analysis. Do you agree?

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    1. Always difficult to predict. Will also depend on how the candidates as a whole are doing.
      I would guess about 40 for I+II and 20 for III. However, as the questions are all interelated, you may have answered part of III already under I or II. That will (shall) give you all marks. For example, the Art.55 discussion on CUB may be under Id, under IIIc, under both, and/or also in part of your answers to the other questions. Likewise, the Art.61 discussion will be expected under IIIc, but if you have it under IIIa or IIIb, it is also fine - you may however then have missed marks on discussion the situation as is, or that will be if you donot interfere, which is trouble (competitor will have boradest claim via DIVI-3D)

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  5. I have to a large extent the same analysis, but Im a bit confused about entitlement proceedings, and I recommended to focus on EP-3D based on passage in GL, C,IX,2 and G4/92:

    2.2
    Original application no longer pending
    In cases where the original application has been withdrawn, refused or deemed to be withdrawn and is thus no longer pending, Art. 61(1)(b) is applicable, thus allowing the third party to still file a new European patent application in respect of the same invention (see G 3/92).

    Any comments on this?

    I did not find any basis for extending entitlement proceedings to divisionals.

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    1. I should be G3/92

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    2. A divisional is just a normal, independent EP application after it was duly filed (except for the substantive requirements of Art.76(1)) - e.g. G4/98, r.5; G1/05&G1/06, r.9.1. So Art.61 applies.
      So, entitlement proceedings for DIVI-3D.

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  6. I believe that since the parent application was filed before R36(1) EPC2000 entered into force a divisional application could be filed before 1/10/2010 as provided in transitional provisions. Therefore the effective date of the divisional application is its filing date and not the filing date of the parent application. What do you think about ?

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    1. That is not what the transitional provisions say: It is the date of filing the divisional (!) that is relevant whether current R.36, or old R.36 (until 1/4/2010) is applicable - OJ 2009, 296, Art.3.
      So here, new R.36(1) applies.
      Divisional DIVI-3D was timely filed, as:
      first comm is July 2010.
      So July 2010 + 10d + 24m --> July or Aug 2012: 1/6/2012 is OK

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    2. I think that only mandatory divisional application can be still validly filed, i.e. in response of a lack of unity of the invention. This is not seem to be the case because no such a communication has been sent from ED but only a lack of clarity objection. Therefore DIVI-3D is a voluntary divisional for which I believe that the deadline was 01/10/2010. This is only my interpretation of transitional provisions.

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    3. The transitional provisions delayed using the new 24 month system until 1/10/2010. After that any filed divisional has to comply with the 24 months. So, unfortunately you've got this small issue wrong.

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    4. There is indeed only the R.36(1)(a) time limit that was triggered.
      It was triggered by the communication of July 2010. Thus, you have 10d + 24m from July 2010.
      It is a mystery to me why you conclude 1/10/2010? That would only be thea case if the 24m limit expired before 1/10/2010? Please explain.

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    5. Unfortunately only now I realize that I had misunderstood transitional provisions of R36(1). I missed the condition "if deadline according to R36(1) has already expired" at April 1 2010 it was still possible to file a divisional application within October 1, 2010. Now it is clear to me. Thank you for your explanation.

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  7. This comment has been removed by the author.

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  8. Would it make sense to comment on the inventive step attack in the opposition with respect to claim 2, clarifying that EP-3D is only prior art under A54(3) for claim 2? Hence not valid for inventive step attack, but only novelty. Or did I get the time table incorrect.

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    1. EP-3D is Art.54(3) against claim 2 of EP-HEMI, so inventive step w.r.t. the 3D protrusions of EP-3D shall NOT be discussed.
      However, the flat inner surface is Art.54(2) prior art, and is to be considered when assessing invetive step.

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  9. Looks like my DII solution was generally correct. That's nice to know. Unfortunately it was not as structured and detailed...

    Having no previous experience of D exams, I think that the time pressure of DI is quite justified, but that the time pressure of DII is just stupid. It should be more on the level of A and B, where you have to work efficiently but not like the house was on fire. Isn't it supposed to be a knowledge test? Presently I lost loads of points for not having time to write down what I know.

    What does EPO say about the time pressure of DII?

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    1. The exam committee designed the exam to be done in the time available, of course. They also tested it extensively on a large group of guinea pigs.

      Comparing this single-paper D to the old style 3-hour DI plus 4 hour DII, the level of difficulty and the time pressure were well comparable, at least in our opinion (DeltaPatents).

      For this exam, the DII-part should be do-able within 3 hours. The DI-part was difficult to do in 2 hours - so skip the questions that you really donot know and use the time to a DI-question or the DII-part where you can score marks!

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  10. Is EP-3D enabling and thereby the first filing of the subject-matter of a frying pan with 3D protrusions? EP-3D does claim a desired effect, so based on the claim, EP-3D was refused. However it also seems likely that also the description only disclose a desired effect as no embodiment how to carry out the ivention is given in EP-3D. If EP-3D is not enabling, EP-HEMI will be the first filing of a frying pan with 3D-protrusions as one example/embodiment is given (the hemispherical protrusions).

    Best reards
    Peter Elsner

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    1. Hi Peter,
      In our opinion, EP-3D is enabling as far at it relates "a frying pan having 3D protrusions on its inner surface". If claimed this way, the frying pan as claimed can be made - with any type of 3D protrusions that a skilled person may reasonably consider. So, it is enabled.
      Also if the claim would include the effect of "heating up the inner surface" if the claim is " frying pan having 3D protrusions on its inner surface for heating up the inner surface faster", the paper does not give any hints that this claim would not be enabled over its full scope: 3D protrusions always have this effect; any particular shapes only give additional advantages.

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  11. Quick question re Div-3D - as this was the first patent application comprising the cubic protrusion subject matter, would it be possible to file a new patent application for the cubic subject matter claiming priority from Div-3D?

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    1. No, this is not possible.
      The cubic matter is not allowed to be there (Art.76(1)) and needs to be removed during examination (which is allowed G1/05). The divisional inherits the fiing date of the parent.
      The cubic matter does not get a filing date: neither Art.76(1) nor any other EPC provision provides for added matter to get a date. It cannot be converted into an independent application, nor can a divisional be directed to this matter - this is also explicitly stated in GL (2012) C-IX, 1.4; also see G1/06.

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    2. Cool! - thanks for the quick reply, I'll have a peek at G1/06 when I get back into the office

      Delete
  12. (Kuifje)

    QII: discount on opposition fee? Refund of excess amount to representative?

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    1. We donot know whether there would be any marks for this. The client does not ask any questions as to reducing costs, nor are there any hints that he is short of money. But sometimes there are marks for these type of (rather isolated) statements.

      In relation to the translation, there will be a mark for being explicit as to what will be the effect on the opposition if the translation is not filed: the opposition will be considered not filed. Whether you need to be specific then on BC's not being a party to the opposition if there would be another opponent and also on no own motion possibility if there are no other (admissible) oppositions, I donot dare to say.

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  13. Having reviewed your proposed answer and the EQE forum, I now realized I listed another date for the Hot Pans trade fair. I made my rough time table without paying attention to the various titles. Although not native in English I was pretty confident in that last January refers to Jan 2012, and not this Jan (2013). I've discussed the issue with some of my English co-workers and all of them agree with my conclusion: when you say last January, you refer to Jan of last year and not this year. I should have known better, but due to all stress I didn't spend time on considering the name of the trade fair. Unfortunately, I get the final dates totally wrong and an analysis which is incorrect in view of the solution above.

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    1. I also saw the discussion on the EQE Forum. Obviously you -as well as quite some candidates- interpret "last January" as referring to January 2012, and would use "this January" to refer to January 2013. Jelle, Pete and I did not spot this as possibly confusing before we saw the discussion... and also cannot conclude without any doubt what the syntactically correct interpretation would be.
      I think the exam committee meant to refer to January 2013 - otherwise the text of par.[008] would have been written differently, I think: I read the whole paragraph as referring to "During the prior art search after the trade fair" - it would be strange to do the search only after 27 Sep 2012 (which is the latest date in par.[008]) if the trade fair was in January 2012.
      Also, the Art.55(1)(a) discussion on CUB is quite nicely designed if the Trade Fair is in Jan 2013, as you then have two chances to get to an Art.55(1)(a) discussion.
      Does somebody have another language version of the paper available? Can the date of the Fair be unambigously determined from the German or the French version?

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    2. (Kuifje)

      Well, the fair was called 'Hot Pans 2013', so it is unlikely that it could have been in Jan 2012

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    3. Same happened to me (I wrote the exam in German - same trap). Under the time pressure I've overseen the clear "hot pans 2013" hint and went for "January 2012" as the last January. Due to the disclosure in January 2012 the only solution for me to get protection for the cubic protrusions was to go for Art. 61(1)b) and Art. 55. It was not possible anymore to file a new EP application since, in my solution, the trade fair was too long ago..

      So, I had the Art. 61(1) and the Art. 55 issue, however, in a completely wrong context. Zero points??

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    4. Hi Kuifje,
      Thx for recalling the name of the trade fair being "Hot Pans 2013". I also got the same remark from another candidate in my email. This clearly settles what the intended interpretation of "last January" was. I guess those candidates that used the full name of the fair in their timelines all went wrong, whereas some of those who abbreciated it may got confused by the last/first January interpretation. (When I practiced earlier D-papers, I abbreviated Mr Bad to Mr B - and overlooked that his name was a hint...)

      Dear cdling:
      Art.61 is not possible for the cubic protrusions: there is no application which validly contains cubic (it is only as Art.76(1)-violating matter in DIVI-3D).
      I expect that you also get some (but not all) marks for an Art.55 discussion if you use the wrong date for the fair - assuming your interpretation of its date is unambiguous and provided you discussed all aspects of Art.55. But that is of course only a tutor's opinion - we will have to see what the exam committee says about it in the examiner's report and/or in the meeting of the committee with the tutors.

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    5. Hi Roel, Kuifje and Cdling,
      I tend to agree that it is logical that the date last Jan refers to Jan 2013 in view of the name of the trade fair and the solution regarding the A55 approach. But why did they not explicitly stated Jan 2013 since every date should be indisputable by itself without any further analysis or interpretation since candidates typically set out a rough timeline as a first step before the case analysis is completed. This is at least what I am used to see in previous exam papers. In the context of time relating to months, you would say that the further you get away from January 2013, the more likely it is that they are referring to Jan 2013. So if someone said it in September I would probably assume they meant Jan 2013. But as it is 26 Feb I think it is ambiguous. In addition, it appears that the German text gave raise to the same speculation, and therefore it is open to interpretation I would say. If someone said last Jan to me I would get them to clarify it as different people could mean different things. When reading annual reports, reports on price increases etc, it is frequently stated that e.g. prices were down 5.5% in January compared to last January. Having said that, I now realize that I overseen a vital interpretation in the DII case, disregarded the name of the trade fair, and was too quick in completing my time line resulting in a misleading situation-as-is. It's a pity that the implication of this erroneous time table resulted in a severe knock-on effect of any potential improvements. However, many thanks for your feedback

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  14. Roel, thank you for your answer. You are right, Art. 61 is not possible for the cubic protrusion. This was merely an attempt to get protection for the cubic protrusion. I had the feeling that it has to be possible somehow, despite my wrongly assumed disclosure at the fair "2012". This is why I tried to get the application date of DIVI-3D, 1 June, 2012 via Art. 61, which was whithin the 6 months period (Art. 55) from January 2012, while arguing that DIVI-3D (cubic) does not have to be pending (G 3/92). I don't expect to get any marks on this one..

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  15. Shouldn't the "III a) Freedom to operate in DE and IT" section include some discussion of DIVI-3D? Although not granted yet, it has basis for a valid claim in IT and DE to a frying pan with 3D protrusions, and thus currently represents a significant inpediment to freedom to operate in DE and IT (although it won't if the client is successful in the later mentioned entitlement dispute - but this is a separate issue?).

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    1. Yes, it already does for the (non-claimed) cubic protrusions, but a complete abswer would also discuss the effect of the 3D claim in DIVI-3D (potential provisional protection in DE and IT - depending on national requirement such as claims translations). The claim to 3D would be novel and inventive and may be granted, unless the EPO raises a double patenting objection as the same claim was already granted to the same application in EP-HEMI.
      If granted, protection in DE and IT (depending on validation). Art.61 before grant possible for same reasons as discussed for EP-HEMI's 3D claim.

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  16. Concerning EP-3D, has anyone thought about prosecuting for the ownership of the application, and requesting a stay of the procedure before the EPO (Rule 14 EPC) Then file a restoration (A. 122 EPC) based on the subsequent extension of the periods for restoration? I know it' a bit complicated but...

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