Thursday, 26 February 2015

Our answers to the DI-part of D 2015 (repost)


Our answer to the DI-part of the D 2015 is given below.
Our answer to the DII-part can be found in a separate thread "Our answer to the DII-part of D 2015".
First impressions to the paper are given in another thread "D2015: First impressions?".

Copies of the paper: EnglishFrench and German versions from EQE Compendium.
All blog threads allow anyone to add comments and already have a lot of valuable, interesting and sometimes surprising discussions between many candidates who posted their comments as well as tutors resulted from those.Any remarks, (different) opinions and questions as are welcome! Please post your contribution as comments to this blog, so everybody can paticipate in and benefit from the discussion/ explanation.


Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 24-02-2014 17:54"), whereas using your real name or even a pseudonym (nick-name) is more personal, more interesting and makes a more attractive conversation.


Be reminded that the task in DI is to show to the Exam Committee that you understand the law and can apply the law. The law tested is the EPC, the PCT, the Paris Convention, decisions and opinions of the Enlarged Board of Appeal (G-decisions as well as R-decisions on petitions for review), landmark decisions of the Technical and Legal Boards of Appeal (T- and J-decisions), a general knowledge of the national laws of the EPC Contracting States "to the extend that they apply to European patent applications and European patents" and of the US and Japan.

Hereto, you need to give an answer supported by an explicit, step-by-step reasoning, wherein each step cites one or more specific legal provision or other reference, such as an OJ EPO publication.

Click "Read more" to read our answer,


Roel, Jelle & Pete


Note: this is a repost - somehow during the editing of the answers yesterday (25 Feb), the whole thread got lost with all the comments. Sorry for any inconvenience.

The answers from yesterday have now been trimmed down in line with our DI methodology, and based on the comments posted to yesterday's answers.


Although we believe that our answers are correct and (close to) complete, our answers may deviate from what the Exam Committee expects.

We expect our answer to score in a range of 30-35 marks out of 40 - however, we have only indicated the main comments, arguments and conclusions. More details are possible.


The answer below should not be considered as a typical answer that a candidate can generate during the EQE itself:

  • It has been made by 2-3 experienced D tutors
  • This is not the order that everything was written down
  • We have not considered possible alternative answers, which may also get a reasonable number of marks based on their "their individual merits"
  • You will not need all of these comments to get a compensable fail or a pass
  • Our answer is not complete - our aim is to give you the core of our answer so you can get a reasonable feeling as the how well you did. If we would try to be complete, you may easily draw a possibly incorrect conclusion as to passing or failing. It is the Exam Committees who decide about the marking tables and your score, not us. In particular:
    • We do not know which exact arguments will attract marks and how many
    • We do not know whether and where bonus points can be awarded and how many
  • A reasoning and conclusion that relies on the content of old legal references will not get any marks where the current, amended versions are applicable.
Note that the date of the exam was 24 February 2015 ("today" in the questions, also if not explicitly indicated). References to the Guidelines are to the November 2014 edition, as in force on 31 December 2014 and the relevant version for this EQE.

Q.1

  • When drawings filed late on 23.02.2015, EP1 and EP2 were redated to that date – R.56(2)
  • So priority is not valid, as priority period expired on 17.02.2015 – Art.87(1).
  • and making available their contents on 20.02.2015, a few days earlier, is Art.54(2) prior art for both, and destroys novelty of both.
Improve EP1:
  • Identical drawings are fully contained in UK1
  • of which priority is claimed
  • so the redate can be undone using R.56(3) by
  • at the latest on 17.2.15 + 2m [R.56(2), R.131(4)] -> 17.4.15 (Fri)
  • EPO already has copy of UK1 – R.56(3)(a) - in English (no translation),
  • indicate where the drawings are completely contained in UK1 – R.56(3)(c)
  • to get 17.02.2015 back as filing date,
  • so priority to UK1 (same content, so same invention and same applicant A) is valid
  • disclosure on 20.02.2015 is then not prior art & EP1 is novel
Improve EP2:
  • No drawings in priority application UK2, so cannot use R.56(3)
  • Two options exist:
    • Drawings add no technical content to original disclosure of UK2. Then the public availability of UK2 would be novelty destroying. To overcome this: withdraw the late-filed documents under R.56(1) within 1 m from a notification of the re-date, we get the original date back – R.56(6). The publication UK2 is then no longer prior art.
    • Drawings add technical content to the original disclosure of UK2 (due to e.g. lack of enablement, Art.83 and/or lack of clarity R.84). Then the public availability of UK2 is not novelty destroying (also not enabled/clear). So, the re-date is not an issue.

Q.2 a)
  • As no translation was filed while the applicant was invited to, and too late to remedy, priority is lost – R.53(3)
  • So, the effective date of X is the filing date of EP1, i.e. 2/1/11
  • EP2 is filed on 13/9/11, so before EP1 and published after, so Art.54(3)
  • and destroys novelty of EP1’s claim X as EP2 already described X – Art.54(1)
  • The publication of the scientific article on 2/10/10 is also prior art Art.54(2) and the EPO knows about the article as it was cited in the SR of EP1
  • and also destroys novelty of EP1’s claim X as the article already described X,
  • so, will not granted

Q.2 b)
  • Yes
  • EP1 was published  asap after 2/1/10 + 18m [Art.93(1)(a), R.131(4)] -> 2/7/11
  • so the loss of priority of EP1 on 10/13+ 4m -> 2/14 occurred only after it was published,
  • at publication for EP1, it became a prior right against EP2, as it has 2/1/10 as eff.date – Art.54(3)
  • Loss of prio after publication has no effect on the prior right effect of EP1 against EP2 – GL G-IV, 5.1.1 (or F-VI 3.4)
  • so, we can file an opposition –Art.99(1) - against EP2 in the ground if lack of novelty – Art.100(a) at the latest by:
  • 12/11/14 + 9m -> 12/8/15 (Wed), so ample time to prepare
  • and EP2 will be revoked


Q.3 a)

  • Yes
  • Argentina is not a PCT state, but it is a PC state (and WTO state)
  • so PCT-A may claim priority of A - Art.8(2)(a) PCT;  Art.4 PC
  • if PCT-A is filed no later than 12m after filing A
  • the declaration - Art.8(1), R.4.10(a) PCT - may be made on filing
  • or provided to the IB or RO within the later of 16m from filing date of A or 4m from today; R.26bis.1(a)
  • The declaration must contain - R.4.10(a) PCT: filing date of A, application number of A & Argentina indicated as office of filing of A.

Q.3 b)
  • Yes
  • PCT appl can only be filed by applicants with nationality or residence of PCT state – Art.9(1)
  • but enough if one applicant is from a PCT state – R.18.3
  • which Hans is (German national)

Q.3 c)
  • Hans and EE can file jointly where Hans can file:
  • State of nationality of Hans, i.e. Germany – R.19(1)(i), R.19.2(ii)
  • EPO acts as RO for Germans – R.19(1)(ii) PCT, R.157(1) EPC
  • [and actually also at IB – R.19.1(iii)]
  • So, filing at GPTO and EPO is allowed
  • but also impose their own language requirements to be a competent rO – R.12.1:
  • with EPO, need to file in En. Fr or Ge – R.12.3 PCT; R.157(2) EPC
  • with GPTO, need to file in Ge – AG-IP Annex C (DE)
  • So, only EPO will act as RO
  • if PCT-A filed at GPTO in English, filing date is kept but application is sent to IB who will then act as RO - R.19.4

Q.4)

EP-D1:

  • EP-D1 was filed in Japanese - this is the application-as-filed
  • and the English translation (description, drawings, claims) may be brought into conformity with this application-as-filed in Japanese –  Art.14(2) [second sentence]
  • This may already be done before the SR is received – J 42/92
  • So, the error in EP-D1can be repaired by replacing “@” by “μm”, and
  • EP-D1 can be used to prosecute claim 1 of JP-D
EP-D2:
  • EP-D2 is originally filed in English, with the wrong symbol, so cannot use Art.14(2)
  • An amendment replacing “@” by “μm” would violate Art.123(2), as it is not evident, i.e. not directly and unambiguously disclosed
  • A request for R.139 correction is also not allowed as it is not immediately evident what the correction should be, only that an error was made – G11/91
  • and the priority document cannot be used either –G 3/89
  • So, cannot successfully use EP-D2 for  the subject matter of claim 2 of JP-D
Improvement:
  • Priority year for JP-D expires on: 24/3/14 + 12m [Art.87(1), R.131(4)] -> 24/3/15 (Tue)
  • so still time to file a new application EP-NEW for claim 2 validly claiming priority from JP-D

Q.5 a)
  • The invitation under R.30(3) EPC gives a time limit expiring
  • 18/2/15 + 10d [R.126(2)] + 2m [R.131(4)] -> 28/4/15 (Tue)
  • so can still file sequence listing
  • in the required, electronic form  and specified format WIPO Standard ST.25 – R.30(1); OJ 2013, 542 (or GL A-IV, 5)
  • and pay the late furnishing fee – RFees 2(1).14a
  • It will then be used for search.
  • As filed after the filing date, must also state that sequence listing does not include matter which violates A.123(2) - GL A-IV, 5
Q.5 b)
  • If not filed, application is refused – R.30(3)
  • Although an appealable decision, appeal will not be successful as it will only confirm that the time limit was missed.
  • FP - A.121 - is available if the 2m limit of R.30(3) is missed –R.135(1):
  • complete two omitted acts = filing sequence listing AND pay late-furnishing fee
  • pay two FP fees – RFees 2(1).12: EUR 250 for missed seq.listing AND 50% of late-furnishing fee
  • Alternatively refile with sequence listing, claiming priority invoking priority from the filed EP application (within 12m). It is for the same invention as the original EP application did disclose the sequences (but only lacked the additional sequence listing)


© Copyright DeltaPatents, 2015
All rights reserved. No part of this answer may be reproduced, used in any way for generating further course material or updates, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without written consent of DeltaPatents.
The answer is made available for personal use only.

22 comments:

  1. Mike:

    Hello,

    I think Q3 a) and Q3 c) are missleading (at least in the German Version).

    Q3.a) The German text asks for "Kann PCT-A eine Prioritätserklärung betreffend Anmeldung A enthalten". In my opinion this question could also be interpretated as can the text of PCT-A contain the priority declaration. As far as I know it is the request which has to contain the priority declaration and not the application. However, the request only contains "FirmaEE" and "Hans" and no priority claim. The answer provided above however is to the question "Kann PCT-A die Priorität von Anmeldung A beanspruchen" and not to "Kann PCT-A eine Prioritätserklärung enthalten".

    Q3c) In my view is also missleading. The German Version of the question is "Welches der folgenden Ämter wird (!!!) als Anmeldeamt tätig". For answering this question it would be necessary to know where they file the application. As long as I know the RO will only start examining the application if I file it with the appropriate RO. Wouldn't it be possible to file directly at RO/IB. In this case according to my understanding neither EPO nor DPMA get active as RO. Therefore, without any further Information this question in my view is incomplete. It neither mentions the application will be filed with EPO, DPMA or IB.

    The question you are answering above is to the question "Welche Anmedeämter können gewählt werden". However, if this question should be the right why can't they than choose RO/IB. I think RO/IB is the most likely because it seems both, Hans and EE are based in Argentina. And if they file with IB then the question would be none of both (EPO/DPMA).

    What did I miss?

    Mike

    ReplyDelete
  2. On Question 3c) I agree with you that the question is unclear. We were pragmatic and followed the most logical interpretation of the question (to answer that GPTO would not become rO based on the language [also mentioning that then the becomes the rO]. Since IB was not mentioned as an option we did not discuss the scenario if it got filed there directly.

    ReplyDelete
    Replies
    1. Q.3 a) We discussed this question here - we were not immediately sure what they wanted to see in the answer. But "Anmeldung"/"application" has different meanings depending on the provisions - see for example Art.78 EPC (procedural) and Art.83 EPC (substantive). A substantive interpretation does not really help you here, so it must be the procedural one.

      I don't understand your comment about the request - R.4(b)(i) indicates the priority claim as part of the request. And it is a section in the request form RO/101.

      Q.3 c) the question mentions the DPMA and EPO - you should do that first because that is where the points are. File there and explain what happens. If you think filing at the IB makes a difference or is better, you can add to your answer.

      I don't understand why you think tit is more likely that they file at the IB because they live in Argentina - they can just as easily file at EPO or DPMA.

      Delete
  3. Q.3 a): to Mike:
    I do not really understand your point.
    Of course, the description of PCT-A can contain a priority declaration. This will also be acccepted to satisfy e.g. the requirement of "pri shall have been claimed on filing" for a succesful incorporation of missing parts or elements from the priority documents under the various paragraphs of R.20 PCT.
    For satisfying further requirements, a formal priority declaration need to be made under e.g., R.4, but this can also be within 16m after the earliest existing/added priority date under R.26bis.1.

    "Kann PCT-A die Priorität von Anmeldung A beanspruchen" is different from Q.3-a): it can be interpreted as "can priority from A be VALIDLY claimed for the subject-matter of PCT-A", whereas the core subject of the question is without doubt "can priority be claimed from Argentina which is a non-PCT state"?

    M

    ReplyDelete
  4. Repost of Anonymous post of 25 February 2015 at 18:19 :
    Q3a) would it not be essential to name Rule 4.10(a) in particular since it is explicitly named as footnote in
    http://www.wipo.int/export/sites/www/pct/en/texts/pdf/pct_paris_wto.pdf

    Q4) would it not also be possible to file a DIV of EP-D1 in the original language according to R36(2) since then A14(2) should also apply to the DIV, which would mean more time. Seems indicated by the fact that both applications claim the same priority which would mean claim 1 and claim 2 should be covered and due to the fee reduction should be the low cost option.

    ReplyDelete
    Replies
    1. Q3a) Indeed, we've added it.

      Q4) That is in principle possible, but here it is stated that EP-D1 only discloses and claims the apparatus according to claim 1 of JP-D. So, EP-D1 does not disclose the subject-matter for EP-D2. Thus not possible

      Delete
  5. Repost of Anonymous of 25 February 2015 at 19:05

    Hello everybody !

    I have a question:

    I did not have the time to number all my answer sheets in the last minutes.
    What will be the consequence ?

    ReplyDelete
    Replies
    1. Should not have any consequence as long as the pages are in the right order or the order can be easily spotted.

      Delete
  6. Wouldn't an appeal to the refusal because of the sequence listing be successful, according to a decision whose number I don't remember? In case the missing acts are carried out during the appeal, of course.

    Juan.

    ReplyDelete
    Replies
    1. You mean J18/08. We have discussed this here internally - from the decision it would appear that you can correct any formal deficiency by filing an appeal - however - the actual decision was related to not appointing a representative. This they solved when they filed an appeal, and it is a pretty stupid reason to lose your patent.
      J18/08 is not in the Guidelines, was not published in the OJEPO, and it is not even in the Case Law book or any of the yearly supplements, so it is not clearly established case law.
      It is not wrong to mention this in addition to the further processing (you would not advise a client just to appeal), but I don't think they expect it for full points. I also don't know if they will give you any points for it.

      Delete
  7. In Q1, for ep1, wouldn't it be necessary to renounce to the first re dating with r. 56 (6) apart from applying r. 56 (3)? I sort of remember a past exam question where they proposed that...

    Juan.

    ReplyDelete
    Replies
    1. Yes - we have used the word "undone", but it is not so clear. The reversal is done using R.56(6), and then a new request under R.53(3) must be made referring to the priority document.

      You are also correct about it being on an old exam - DII 2010

      Delete
  8. I am curious about your first reaction when reading Question 5 about the sequence listings:

    if you use sequence listings in your daily life as patent attorney trainee, did you consider the question a (pleasant) surprise / difficult / easy?

    if you are an electricity/mechanics candidate or a "classical" chemist, and never saw any sequence listing, did you consider the question an (unpleasant) surprise / difficult / easy? Were you soothed after you realized that you do not need to understand at all what a sequence listing is to be able to answer the question, and recognized (possibly after an initial panic) that the question could be well-answered with just the R.30 and OJ 2013, 542 or the corresponding parts of the Guidelines?

    ReplyDelete
    Replies
    1. And did some of you consider R.56 and concluded that that does / does not work?

      Delete
    2. As a mechanics candidate, I did not find the question particularly difficult, I did not need much thinking. If you have studied the reference book (in my case Visser) well, you should know that there are two omitted acts. However, I mentioned the decision of the president of OJ 2011, 372 plus the GL instead of the OJ 2013, and I didn't say that the sequence listing wouldn't be part of the description, so I might lose some valuable marks...

      Juan.

      Delete
    3. The Exam Committee often comments in the Examiner's report to old references:

      "Many candidates this year used in their answers an outdated version of the legal
      provisions. Candidates are reminded that, according to the Implementing Provisions
      to the Regulation on the European Qualifying Examination, the examination syllabus
      covers the legal texts which are in force on 31 December of the year prior to the
      examination. "

      (Citation from Examiner's report of D 2014)

      Delete
    4. Note however that OJ 2013, 542 (Notice dd. 18 Oct 2013) _supplements_ OJ 2011, 372 (Dec Prfes dd 28 April 2011) -see opening paragraph of OJ 2013, 542- and supersedes only the earlier Notice of OJ 2011, 376 (Notice dd. 28 April 2011) -see OJ 2013, 542 par.V- per 1 January 2014.

      The Guidelines of November 2014 therefore refer to the 2011 OJ for the Decision and the 2013 OJ for the Notice :

      - exclusively to the OLD OJ 2011, 273 in e.g. B-IV, 1.2(i)(a);
      - exclusively to the NEW OJ 2013, 542 in e.g. F-II, 6.1;
      - to both the OLD AND the NEW OJ EPO in e.g. A-II, 1.2(v); A-IV, 5; A-IV, 5.3; E-VIII, 2.4.2 and H-IV, 2.3.4

      Delete
    5. But the OJ 2013, 542 still makes reference to the Decision of the President (http://archive.epo.org/epo/pubs/oj013/11_13/11_5423.pdf) of the former OJ as to how they should be filed. Particularly, it refers to Art 1(1) of such decision, which mentions the WIPO standard... I also cited the GL, A-IV,5 as basis for the electronic form...

      Delete
    6. Sorry, your explanation overlapped my following question...

      Juan.

      Delete
  9. The format of the (top half of the pages with the) calendars changed this year.

    I personally appreciate the earlier format better than the new one, as I consider counting months more easy (just going horizontal), as well as counting days (in one column, maybe one carry to a next column in the old format, while going much more zigzag with much more carries in the current format - e.g, 10 days requires now always at least one carry as it is more than a week, and sometimes also requires to jump to a next month box, whereas it often did not require any carry in the former system -if the 10 days ended in the same month as where it started- and the jump into a next month was in my view also more easy in the old system -larger horizontal and vertical jumps now than going from the end of one column to the start of the next column, e.g. when going from 31 October to 1 November-.

    What is your experience when sitting the exam?
    First reaction when seeing that the format changed?
    Use of the box format vs use of the column format?

    ReplyDelete
  10. The original EP-D2 in Question 4 need not to be withdraw?

    ReplyDelete
    Replies
    1. Pls motivate your suggestion - why do you consider withdrawing EP-D2? What is -in your view- the effect if you do not, what is the effect if you do?

      And please indicate your name or a nickname to facilitate the discussion.

      Delete