Thursday, 3 March 2016

D 2016 - our answer to the DII part



Our answer to the DII-part of the D2016 is given below.
Our answer to the DI-part is available in a separate post"D 2016 - our answers to the DI-part".
First impressions to the paper are given in another thread "First impressions D2016?".
We will post copies of the paper as soon as we received a clean copy (English, French and German).
All blogs 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 about our answer are welcome! Please post your contribution as comments to this blog, so everybody can participate 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 27-02-2015 23:49"), whereas using your real name or alternatively a pseudonym (nick-name) is more personal, more interesting and makes a more attractive conversation.

Comments are welcome in any official EPO language, not just English. So, comments in German and French are also very welcome!

Be reminded that the task in DII is to advise the client how to build and use a patent portfolio to support his business and to advise the client how to deal with third party’s rights that may prevent him from doing his business. It is thus not sufficient to only use legal patent terms (prosecute, infringe, within scope): you need use real life words that a real life client can understand (you will have protection for R, so you can stop your competitor from making/selling/using/importing ... in FR; your competitor has protection for S, so you can be stopped from producing ... in CZ). In DII you have to -and can- fully concentrate on giving an adequate advice without being disturbed by looking up and citing legal basis.

Where we give legal basis, this is for information only or to briefly explain a legal concept - legal basis is not required in the DII-part for points, but you can use it to clearly explain your answer to the marker. For example, it is a lot easier to label something an Art.54(3) application than to explain it.

Click "Read more" to read our answer,

Roel, Pete, Jelle



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 40-50 marks out of 60 - however, we have only indicated the main comments, arguments and conclusions. Many 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  necessarily complete, and could also be over-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. It is the Exam Committees who decide on 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 1 March 2016 ("today" in the questions, also if not explicitly indicated). References to the Guidelines are to the November 2015 edition, as in force on 31 December 2015 and the relevant version for this EQE.

Part of our model solution which will be available in our webshop in September


Q.1 Current Patent Situation
a) Pcc with e-rib
CH-BC is earliest application

Last day to claim priority of CH-BC is:
1/8/14 + 12m => 1/8/15 (sat) => 3/8/15 (Mon)
so PCT-BC in time to claim priority
Both applications disclose Pcc with e-rib, so priority valid and effective date is f.d. CH-BC

PCT-BC
No prior art disclosing ribs
So Pcc with e-rib novel and inventive (can use any plastic material)
Will be granted in any state/region BC enters & they can stop you exploiting Pcc with e-rib there
E.g. after EP grant & automatic validation, they can stop you in FR
They can stop you if you use any plastic, including X

PCT-SA
PCT-SA describes Pcc with e-rib, but currently no claim, so PCT-SA can result in no protection

b) Pcc with t-rib
FR-SA is earliest application
Last day to claim priority of FR-SA:
12/12/14 +12m -> 12/12/15 (Sat) -> 14/12/15 (Mon)
so PCT-SA in time to claim priority
Both applications disclose Pcc with t-rib, so priority valid and effective date of sjm is f.d. FR-SA

PCT-SA
PCT-SA describes Pcc with t-rib, but currently no claim, so PCT-SA can result in no protection

No other applications describing or claiming t-rib, so no-one will have a specific right to exclude exploitation of Pcc with t-rib

c) Pcc with rib
CH-BC is earliest application

PCT-BC
Both applications disclose Pcc with rib, so priority valid and effective date is f.d. CH-BC
No prior art disclosing ribs
So Pcc with rib novel and inventive (more rigid so more reliable piercing)
This is broadest claim for ribs
Will be granted in any state/region BC enters & they can stop you exploiting Pcc with any rib cross-section, including t-rib and e-rib there
E.g. after EP grant & automatic validation, they can stop you in FR
They can stop you if you use any plastic, including X

PCT-SA
Both PCT-SA & FR-SA describe Pcc with rib, so priority valid & effective date = f.d. FR-SA
Pcc with e-rib sjm in PCT-BC has earlier effective date and published later, so PCT-BC will be novelty destroying in states/regions where both PCT-SA and PCT-BC enter, including EP as Art. 54(3).

d) Pcc of X
EP1-BC is earliest application

EP1-BC has been granted in 5/12.
Opposition was rejected on 30/12/15, and patent maintained as granted.

But D was available to public well before f.d. EP1-BC
D discloses Pcc with X
so EP1-BC claim to PCC with X is not novel, and EP1-BC is invalidly granted

EPO and BC consider EP1-BC validly granted.
BC may stop you exploiting Pcc of X in any state they validated after the grant. Validation in FR was automatic, so assuming annuities were paid, you can be stopped in FR
BC can also stop you exploiting PCC with ribs of X, which can be e-ribs, t-ribs or any other cross-sections.
They cannot stop you exploiting Pcc with e-ribs or t-ribs if you use a plastic other than X.

You are FR company, so not a person of A.14(4) and not entitled to file documents in Dutch.
Notice of appeal will be deemed not filed & appeal fee will be refunded
So if we do nothing appeal will fail and EP1-BC will be maintained as granted

e) Cp with G
FR1-SA
FR1-SA was actually earliest application and your first application for Cp with G.
FR1-SA was withdrawn w/o any rights outstanding, and was not published, before FR2-SA was filed. Priority of FR1-SA was never claimed. FR2-SA is in the same state (FR).
So FR2-SA may be considered your first application for Cp with G under Art. 4C(4) PC, and this will be recognized by EPO for any subsequent filings claiming priority of FR2-SA (Art.87(4) EPC)

PCT-SA
PCT-SA discloses Cp with G, but there is currently no claim, so PCT-SA can result in no protection
PCT-BC

PCT-BC claims prio from CH-BC, but CH-BC does not disclose Cp with G, so priority not valid and effective date of Cp with G claim is f.d. PCT-BC
PCT-SA does not claim priority from FR-SAS2, so G-part of PCT-SA is too late, so no relevant prior art
So Cp with G is novel & inventive (surprisingly good coffee)
Will be granted in any state or region BC enters & they can stop you exploiting Cp with G there
E.g. after EP grant & automatic validation, they can stop you in FR

BC can also stop you using Cp with G in any type of Pcc – with ribs, without ribs, made of any plastic, made of X

Q.2 Improvements & improved exploitation
a) Pcc with e-rib
PCT-SA
After ISR is dispatched, we can file Art. 19 claims, including Pcc with e-rib. It will not be searched, but we can use these claims for all national/regional entries (or just amend on or after each entry to include claim).
Both PCT-SA & FR-SA describe Pcc with e-rib, so priority valid & effective date = f.d. FR-SA
Pcc with e-rib sjm in PCT-BC has earlier effective date and published later, so PCT-BC will be novelty destroying in states/regions where both PCT-SA and PCT-BC enter, including EP as Art. 54(3).
No other disclosures of Pcc with e-rib, so in states/regions where only PCT-SA enters, Pcc with e-rib claim will be novel & inventive (can use any plastic material), allowing you to stop BC from exploiting Pcc with e-rib in those states/regions
E.g. after EP grant & automatic validation, you can stop them in CH

b) Pcc with t-rib
PCT-SA
We can include claim to Pcc with t-ribs in Art. 19 claims (or in amended claims on or after each entry)
Both PCT-SA & FR-SA describe Pcc with t-rib, so priority valid & effective date = f.d. FR-SA
There are no disclosures of Pcc with t-rib, so in any states/regions where PCT-SA enters, Pcc with t-rib claim will be novel & inventive (can use any plastic material), allowing you to stop BC from exploiting Pcc with t-rib in those states/regions

c) Pcc with ribs
PCT-BC
• Claim is not limited to cross-section shape or material
• We have data that shows that t-rib or e-rib may be made of any plastic, but other shapes must be made of X (impossible to produce)
• So not substantially all rib cross-sections can be produced, which means that the Pcc with rib claim is not enabled (T688/94, T939/92)
• We should file 3rd-party observations with national/regional offices where they enter - EP will definitely take the data into account.

• On or after entry, BC must either amend the claim or delete it – however, no support for X in PCT-BC & CH-BC
• So BC must delete the Pcc with rib claim, leaving them with only the Pcc with e-rib claim

• Which would prevent them being able to stop exploitation of Pcc with any shapes of rib, and they cannot stop exploitation of t-rib in the states/regions they enter

PCT-SA
• As we mention the issues in our appln, we may receive the same objection after national/regional entry, and certainly will in EP phase
• So we should replace Pcc with rib claim by 3 claims – “Pcc with e-rib", "Pcc with t-rib” and “Pcc with rib of X”
• We can use Art. 19 after ISR is dispatched, They will not be searched, but we can use these claims for all national/regional entries (or just amend on or after each entry to include claims).
Both PCT-SA & FR-SA describe sjm of these claims, so priority valid & effective date = f.d. FR-SA
For “Pcc with e-rib"& "Pcc with t-rib” see above & below.

“Pcc with rib of X” claim
Pcc with rib sjm in PCT-BC has earlier effective date and published later, so PCT-BC will be considered prior right where both PCT-SA and PCT-BC enter, including EP as Art. 54(3).
But PCT-BC does not disclose X, so claim is novel

D and EP1-BC are A.54(2), publicly disclosing Pcc of X, but no disclosure of ribs so claim is novel
Claim is inventive because improved rigidity means imroved piercing reliability
So claim will be granted in all states/regions you enter, allowing you to stop exploitations of all Pcc with rib of X, including t-rib and e-rib cross sections. You also cannot stop exploitation of Pcc with t-rib & e-rib if they do not use X.

d) Pcc of X
Opposition ground is lack of novelty of Cp with X
Facts & evidence were based on common general knowledge

I advise to file a new notice of appeal in En, Fr or Ge and pay the appeal fee again no later than:
30/12/15 + 10d => 9/1/16 + 2m => 9/3/16
Although last day to file grounds is:
9/1/16 + 4m => 9/5/16 (Mon),
I advise to do this as soon as possible to improve our bargaining position
The ground remains novelty, but we are now providing new facts and evidence (D) to show that Pcc with X was known 2 yrs before f.d. EP1-BC
We may have to explain why D was not found earlier

BoA will accept argument, and revoke the patent
BC will then no longer be able to stop you exploiting Pcc with X for any rib cross-section (or Pcc with X without ribs)

e) Cp with G
FR2-SA is actually earliest application

PCT-SA
I advise adding a prio-claim in PCT-SA to FR2-SA
Last day is:
12/12/14 + 16m => 12/4/16
14/12/15 + 4m => 14/4/16
=> until 14/4/16, which is latest calculation
We can include claim to Cp with G in Art. 19 claims (or in amended claims on or after each entry)
FR2-SA & FR-SA both filed on 12/12/14, so PCT-SA filed in time
Both PCT-SA & FR2-SA describe Cp with G, so priority valid & effective date = f.d. FR2-SA
There are no relevant disclosures of Cp with G, so in any states/regions where PCT-SA enters, Cp with G will be novel & inventive (surprisingly good coffee), allowing you to stop BC from exploiting Cp with G in those states/regions.
E.g. after EP grant & automatic validation, you can stop them in CH

BC will need a licence from you to exploit.

PCT-BC
Cp with G sjm of PCT-SA now has earlier effective date = fd FR2-SA, and will be published later, so it will be a prior right
So in states/regions where both PCT-BC & PCT-SA enter, Cp with G claim in PCT-BC will not be novel. BC cannot stop you exploiting CP with G in those states/regions.

I suggest entering CH directly as soon as possible to get a quick grant there. Entry no later than:
12/12/14 + 30m => 12/6/17
Protection in CH also possible via EP designation – entry no later than:
12/12/14 + 31m => 12/7/17

Q.3 Negotiate
So after the improvements are performed:
BC can only pursue rights to Pcc with e-rib in any state/region they enter with PCT-BC, and can stop you exploiting the advantageous e-rib, which allows any plastic material to be used.
They cannot stop you from exploiting the t-rib.

SA can stop BC from exploiting t-rib in any state/region you enter with PCT-SA.  Although you have a patent its exploitation is dependent on PCT-BC.

SA can stop BC from exploiting Pcc with rib of X in any state/region you enter with PCT-SA.

SA have broadest right to Cp with G  in any state/region you enter with PCT-SA.

I suggest a cross-licence to resolve this – I will make an appointment with BC as soon as possible.

46 comments:

  1. This comment has been removed by the author.

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  2. Dear Tutor,

    Thank you so much for your proposal of solution to paper DII.

    I substantially agree with your solution.

    However I would like to discuss with you of the possibility to file a notice of opposition against the EP regional phase of PCT-BC once granted. In particular I have suggest to attack such an EP application on the basis of lack of sufficient disclosure Art 100(b) EPC because the EP patent claims plastic coffee capsule with a rib but since it is impossible to provide any other shape for the rib unless you use material X, the skilled person would not be able to carry out the invention since in the disclosure of PCT-BC this material X is not disclosed. Therefore I have supposed that we could force BC to limit the scope of protection of the corresponding EP patent to elliptical rib because this is the only shape disclosed in the patent and that can be produced with any plastic material.

    Do you believe that this approach is completely groundless ?

    Thank you in advance for your response.

    Francesco

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  3. Thank you for your response suggestion.
    I however half-disagree with your response Q2c: PCC with ribs is not sufficiently disclosed/implies an inventive step over the whole scope of protection as it does not work for all embodiments when another material than X is used. This lack of sufficiency of disclosure information was given in the text [004]: it thus have to be used. Third party observations (under EP because 1/3 Obs under PCT should concern novelty and inventive step based on prior art)/opposition if a patent is granted should be filed with complementary test results. However, for “peace of exploitation”, one could suggest the client to also agree to a licence as you suggest it whilst filing anonymous third party observations and/or an opposition when/if EP grant.
    All my thoughts to those presenting EQE-C this morning.

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  4. @Francesco: No, I donot think it would be groundless. I originally tended to consider the plastic cup with rib claim from PCT-BC (coming to your conclusion) as well as the plastic cup with rib claim if PCT-SA to be not enabled over the full scope of the claim (see par.[004], second sentence).
    However, with X being CGK (par [0004]), also CGK for packaging food ([009]), and coffee capsules from X being known from EP1-BC as well as document D (more than 6 yrs old), I concluded that it was most likely that it was expected to use X as CGK in enablement (allowed), and to also test that candidates would not use X as CGK for an amendment in PCT-BC(not allowed).
    Note: the exploitation discussion is also not too interesting if none of the two parties gets a broad right - if it happens that there is no dependent patent situation, you always need to check whether you maybe overlooked something. Not really a legal argument, but still...

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    1. Dear Roel, thank you very much for your precious opinion.

      Delete
    2. From my point of view: general knowledge in the art (from what is given in the exam paper) does not enable to overcome the insufficiency of disclosure deficiency of CH-BC/PCT-BC:
      - in [004] it is said that “these facts are disclosed in the description of our application FR-SA”, thus it is implicit that it was not commonly known before the filing /publication of FR-SA that ONLY X could enable the fabrication of all types of capsules, or why put this phrase in [0004]?
      - although X is known in the art of food packaging [009], coffee capsules are specific items used in specific conditions (i.e. for coffee machines); the technical information provided does not enable to use this general disclosure for specific coffee capsules;
      - EP1-BC and document D are two isolated cases. Would this be considered enough to represent general knowledge in the field (according to case law, one patent document is not enough if not biotech and again, our client seems surprised that only X can be used in [004])…
      The outcome of considering “Pcc” insufficiently disclosed from the exam paper in CH-BC/PCT-BC. (which cannot be solved by BC (#A123(2) EPC) results in the fact that if the correct actions are made by our client (third party observations/opposition in EP prosecution): BC will not have any rights for Pcc.
      None of the two parties would get a broad right patent-depending-cross-licensing in this exam… and so? It is not said anywhere that EQE-D should always end-up in patent-depending-cross-licensing situations…
      Ccl.: 2016 D paper thus seems a bit unusual in terms of exploitation (question II-3)… Can we expect question II-3 as being poorly rated in terms of points?

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    3. I would fully agree with your second and third dash if it were not that par [0004] say "Material X is knwon by the person skilled in the art". I think the suggestion that Johan made about this sentence (below, Anonymous3 March 2016 at 11:38) would have fully resolved it, but we have the paper as it is.
      But, w.r.t. your third dash: it would not be needed that ONLY X enables the fabrication of prior art capsules, it would enough that the CGK tells the skilled person he can make the prior art capsules from X -- there may be alternatives, as long as it is no undue burden to find it works with X.

      I donot agree that BC would not have any rights: BC could still fall back to Pcc+ellipotical ribs (already claimed), as X is then not necessary

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    4. I personally do not find it implicit at all from the disclosure of “Material X is known by a person skilled in the art” that this is relevant to the technical field mentioned. Being chemist, I understand that material X is known per se, i.e. anyone knows how to make it, but knowing the structure/manufacture of a compound does not disclose all its uses, i.e. [004] clearly shows that (from my point of view) there is an insufficiency of disclosure of Pcc for CH-BC/PCT-BC.
      Again, why would it be emphasized that it is disclosed in patent FR-SA if it was general knowledge?
      I have shown this EQE paper to other fellow chemists who all (3 of them) came to the same conclusion as me. Interestingly, the 2 mechanic patent attorneys I questioned both came to the opposite conclusion…
      The results of EQE 2016 are they going to be "interesting", this year?

      Concerning the point of Pcc +elliptical rib, this is not a broad scope and thus it wasn’t the point I was discussing. BC can of course validly claim this, but not the broad scope Pcc (as supposingly insufficiently disclosed ;-)).

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    5. to the above Anonymous, I agree with you, I am a biologist. I think it is quite confused that on the one hand they told you that X is common general knowledge and skilled person should be able to connect it with cross section of rib, on the other hand you are not allowed to stand on the side of skilled person to guess how many possible type of cross sections a skilled person can establish.

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  5. Dear Tutor, I copied my comment from the first impression discussion to here.

    @Roel, @Pete,

    Point 1, how many points subsequently do you think people will lost if he "mistakenly" marked that PCT-BC cannot claim rib because of the broad and non-enabling embodiment and cannot survive in the later prosecution?

    Point 2, following the logic of point 1, for PCT-SA, couldn't we amend the rib claim into rib made of material X? I believe that the description of FR-SA fully support this amendment.

    Thus, I propose to made the amendment on PCT-SA to amendment the rib claim into rib made of material X, which will be novel and inventive.

    Point 3,

    the X itself is common general knowledge. How about the cross section of the rib also belongs to a common general knowledge? and, how about applying X to the cross seciton of the rib can be achieve by skilled person by common general knowledge?

    I maybe fail to do this exam because of my geomtry knowledge---just joking but how many types of cross section of the rib can have?

    The exam paper only mentions two specific types --- ellictial and trangial but according to my geomtry knowlege peopole can make countless number of cross section

    https://en.wikipedia.org/wiki/Cross_section_%28geometry%29

    I doubt why skilled person will be allowed to cross this gap based on only one enable example to make such a broad claim---he has to practive countless shapes of cross section to make it a common general knowlege that X is necessary for rib material.

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    1. @ Anonymous3 March 2016 at 11:29 - there are no negative points on the D paper, so you will not lose points. You only can lose some time. If you are looking to attack the client's position, and you think this is possible then you should suggest it. It is not wrong to do this. But if you do not have all the facts to come to a clear conclusion, then you should limit your answer to pointing out the issues. Otherwise, you risk spending a lot of time on it.
      The other thing to look at is what the possible outcome is - If the EPO agrees with you, BC could be forced to limit the claims to: 1) Pcc with e-rib. So it may be worth investigating. But we are not told how many "other shapes cross-sections" can be used for the ribs - it is at least 2, but is is 20?.

      Also the same can be asserted against our claim in PCT-SA.So we would have to amend to 1) Pcc with e-rib or t-rib / 2) Pcc with cross-sections excluding t & e with X.

      Amending just to Pcc with rib of X is limiting because e-rib & t-ribs can be used with all materials. But if you added this as an additional fallback position, this is fine.

      DII is not a technical paper - they give you the technical information you need => "other cross-sections shapes" are possible. It would be incorrect to simply assume that all cross-sections mentioned in Wikipedia will work for this specific application.

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    2. @ Pete thanks for answering. I think it is difficult to interpret maybe I am bio person. Maybe for mechanist it is more straightforward the question. For me the exam paper suggest two geometry shape of cross-section, I immediately came to the conclusion that there are countless shape of geometry shape---which I think, it should be the basic science knowledge an EQE candidates are expected to have. Otherwise, I can also argue that I don't understand the term "rib" for a capsule because it was not defined by the Exam paper.

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    3. After a discussion between Pete, Gregory, Jelle and me, we decided to change our answer and add non-enablement of the broad Pcc+rib claims - as not enabled over the whole scope (X needed for all shapes but two).
      You can expect the updated version a.s.a.p.
      The conclusion depends a lot on whether X is known as common general knowledge for a chemist -such that you do not need a disclosure how to make X-, or X is in the common general knowledge of coffee cup makers as most used material (see the comment of Johan below). As some of you commented, the last sentence of par.[004] is most likely meant to be read as the first (you can just refer to X, do not need more details, when needing/using X). The "other shapes cannot be made" statement is so strong, that it calls for an enablement discussion.

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  6. Would all this discussion (above and in the First Impressions discussuib) as to whether the lack of mentioning X in PCT-BC not have been presented if the last sentence of pararaph [004] would not have read "Material X is known by a person skilled in the art" but rather "Material X is known by a person skilled in the art and is widely used for making coffee cups since several years" or even just "Material Xis widely used for making coffee cups since several years"?

    Johan

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    1. @Johan: ('presented' must be 'prevented' I assume) I agree it would make it umambiguous. But when reading your proposed sentence in the context of the paragraph, it seems -with hindsight :-)- a bit overdone. On the other side, "the person skilled in the art" would need to include a reference to a specific technical field (which art): your proposal would make that explicit, whereas it is now implicit (or maybe according to some people even undefined).

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    2. I disagree with the "implicit meaning". What the sentence "Material X is known by a person skilled in the art" means is that the manufacture of Material X is known, and thus that when someone is using it to do something, then you do not need to go into more détails on how material X is made.
      The specific use (i.e. for capsules)of material X is not disclosed from this sentence, even in the context.
      I have checked the french version of the EQE D and it has the same meaning. I am not fluent enough in german to give an opinion. Anyone can comment the german version?

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    3. See my remark above - after reconsideration we follow your interpretation and will change/changed our post.

      Delete
  7. Regarding "Cp with G" in BC's side, isn't paragraph 6 saying that in addition to the disclosure of CH-BC, PCT-BC discloses and claims "Cp with G" ? My initial understanding from this paragraph was that the effective date of Cp with G became the f.d of PCT-BC because paragraph says 'in addition' ? thanks.

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    1. You are correct. Correct in our handwritten answer and in the timeline, wrong in the typed summary... Our conclusion about G in PCT-SA is correct.
      I will correct the post.

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  8. dear Tutor, my question relates to my handwritting. I was extremely stressful so I had a very bad handwritting and may have "swollow" some aphebelts in the word. Will the examiner be so kind to have patience for trying to read my answer paper?

    in addition, for the features listed by Q1 of DII, I used abbreviations like "capsules+triangular", "capules+X" or even just "b" from the category of the question, and sometimes I spell the full time or didn't fix to the previous abbreviation I used before. Would the examiner try to understand these abbreviations, that say, "in a good faith?"

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    1. I mean: Sometimes I spell the full name of the feature or sometimes I didn't fix to the previous abbreviation I used before. Would the examiner try to understand these abbreviations, that say, "in a good faith?"

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    2. @ Anonymous3 March 2016 at 15:58 - if your handwriting is very bad, they will contact you within a couple of weeks to type it in for them. They will then mark the typewritten version and the original version together.

      The markers do their best in good faith to understand your answers - they are trying their best to pass people.

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  9. Concerning the sentence at par. 004 "It is impossible to produce coffee capsules having ribs of other shapes of the cross-section unless they are made of plastic material X", It has driven me to the conclusion that it could be possible to attack PCT-BC, or better its EP regional phase, for insufficient disclosure under Art 83 EPC in order to limit its scope of protection to ccp made of any plastic material but having elliptical rib. Neither PCT-BC nor CH-BC, in fact, discloses or suggest to use material X.

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  10. Regarding improvements, for example referring to PCT-SA subject matters, my initial understanding was "Cp with G" and "Pcc with trib" were different inventions although these subject matters were disclosed under PCT-SA (providing SA added another priority from FR2-SA within the time limit and amended original claims on or after EP entry towards "Pcc with trib"). So, file a divisional after entering EP for "Cp with G" if the first EP application from PCT-SA claimed "Pcc with trib". Could this be a reasonable advice or a more detailed explanation is expected ? thanks

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    1. Sounds OK to me - I think you have the essentials: divisional not before entry, non-unity, no need to do sth before entry (and cannot).
      And then say sth about grant and validation in view of the last Q (where can you stop...), and what the effect on infringement is if you have these two different granted patents.

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  11. "South Polar" represents unable to communicate and have to authorize us as the new representative...since the previous notice of appeal is inadmissible and no possible to ask the Dutch guy to correct it since he mgiht be freezed somewhere in the south polar ;)

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  12. Dear Tutor,

    I like very much your last answer to paper DII.

    Thank you again.

    Francesco

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  13. Dear all,
    I looked at this again based on comments from Gregory Baque, Roel and others on this blog. As a general rule, you are looking for ways to attack the competitor portfolio using the facts given and in our answer we don't really use some of the facts.

    I have amended the answer to include the attack on the Pcc with rib claim in PCT-BC based on lack of enablement (impossible to produce "other" rib cross-sections without X). As they don't disclose X in PCT-BC, then they have no fall back position and must delete claim 1. So the protection is limited to Pcc with e-rib.

    Obviously then we have to amend our claim in PCT-SA because it has the same problem, and we have it explicitly mentioned in the application. We can claim 1."Pcc with e-rib" and 2."Pcc with t-rib"(already mentioned in our answer).
    We can also claim 3."Pcc of X with rib having cross-section other than t or e". It is novel (PCT-BC does not disclose X, EP1-BC and D do not disclose ribs).
    The only advantage for inventive step we came up with in the office is the fact that using X with ribs allows cross-sections other than t or e to be used.

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    1. I was not happy with the disclaimer (claim 3) because of the vagueness of "other cross-sections". On the way home, I figured it out :-)

      e-rib and t-rib work with any material, including X. So all cross-section shapes work with X - so it is not required to specify the shape in the claim.

      3) “Pcc with rib of X” claim
      • Pcc with rib sjm in PCT-BC has earlier effective date and published later, so PCT-BC will be considered prior right where both PCT-SA and PCT-BC enter, including EP as Art. 54(3).
      • But PCT-BC does not disclose X, so claim is novel

      • D and EP1-BC are A.54(2), publicly disclosing Pcc of X, but no disclosure of ribs so claim is novel
      • Claim is inventive because improved rigidity means imroved piercing reliability
      • So claim will be granted in all states/regions you enter, allowing you to stop exploitations of all Pcc with rib of X, including t-rib and e-rib cross sections. You also cannot stop exploitation of Pcc with t-rib & e-rib if they do not use X.

      I have updated the answer accordingly.

      Delete
    2. I am
      Anonymous3 March 2016 at 11:29
      and
      Anonymous3 March 2016 at 16:56

      So basically my arguements are correct---even I am still not confident to say that I will past this exam. But anyway, for PCT-SA, as I have pointed out Anonymously, the new claim concerning plastic capsules having rib made of X will be the possible broadest claim in this field the client SA can obtain. There is not need to specially disclaim and exclude t-rib and e-rib cross sections in this claim.

      For PCT-BC, the broad claim plastic capsules having rib will be revoked because of the non-enablement.

      thanks,

      G.

      Delete
  14. Dear Tutors,

    I actually believe that your answer regarding the improvement of "d) Pcc of X" is wrong. Added grounds in a second instance are only allowed if they are prima facie relevant and if the patentee agrees to it (G10/91) headnote 3.

    Accordingly my answer to that questions was that document D will only be allowed if BC (patentee and competitor) allows it into the proceedings. Therefore I suggested to the client (SA) that we can reduce the cost by not filing the appeal, and just send document D to BC with a note explaining that BC would never be able to enforce EP1-BC in national court proceeding agains SA as document D is novelty destroying.

    Cheers, and thanks to both Pete and Sander for extremely good tutoring during the D and C courses!

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    1. Dear Linus,

      you quote G 10/91 correctly. But you misinterpreted it. It says GROUNDS, not facts or arguments. In DII your client needs to now whether new facts and arguments will be considered by the BoA. The grounds (lack of novelty based on Art. 100 (a) and Art. 54) are the same as submitted with the original opposition.

      Delete
    2. We discussed this here internally - no-one knew if there is case law that fits this situation so that you can come to a definite answer.

      As Manuel points out, the ground = lack of novelty has not changed.
      The facts & argumentation filed by the client in opposition is incorrect - "not novel because X was widely known for food packaging (as common general knowledge)" is closer to an inventive step attack.

      In general, you are allowed in the grounds to strengthen your appeal case, but this is a grey area. The case law does not give any clear outcome here. In our favour are the early phase of the appeal, the fact that "Pcc of X" is disclosed in D makes it "prima-facie" relevant, and no change in the ground.

      Also, EP1-BC is such a broad patent, it makes sense to try the appeal.

      Delete
    3. ... and thanks for the kind words about me and Sander.

      Delete
    4. I believe you are both correct, having read the paper again (wish I had the time during the Exam), the opposition was based on lack of novelty. Vissers comment on that situation, i.e. added facts and not ground, is that the BoA will accept the document if it is prima facie relevant; although they will take objections by the patentee and procedural complication into account [T1002/92].

      Hence, it is not a fresh ground as I erroneously concluded, but whether the BoA will accept document D is still up in the air as Pete and the others at Deltapatents concluded.

      Delete
  15. Is there any chance, that the interpretation of Pcc with rib as being not enabled is wrong? I am a chemist and from my experience the fact that neither a cross section nor a specific material is mentioned does not necessarily mean that this results in an undue burden for the skilled person. As far as I understood the paper it says that material X is known to the skilled person and also that document D discloses Pcc of X. D was published long before all the other applications (two years before the date of filing of EP1-BC which was granted in 2012 and all other documents were filed in 2013 or later), hence I concluded that by the time of filing of the other documents it has become general knowledge of the skilled person to produce Pcc of X. Accordingly the skilled person would easily be able to produce pcc with all rib cross sections without any undue burden. Therefore in my solution BC can prevent SA from using the pcc with any rib cross section but I suggested a cross license between BC and SA, as SA has the better position concerning the Cp with G and both parties have interest in exploiting the Pcc with ribs as well as the Cp with G. Do you think that I can get any marks at all, if the right solution would have been to interpret paragraph [004] in the way that the Pcc with ribs claim is not enabled and therfore not enforceable?

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    1. We had some discussion in the office here among the tutors, and we are not completely sure if it was intended to do this. However, the paragraph [004] is put in their for a reason, and the fact that PCT-BC and CH-BC do not disclose X also in paragraph [006]. The main guide on DII is that you should look for ways to attack the competitors rights - if you see something that has a good chance of being succesful, you mention it in your answer. If you see something that is possible, but probably will not be successful, this should also be noted birefly in your answer. If you did not see it, then you saved some time and spent it somewhere else getting other points.
      We will have to wait for the compendium to see what the intended answer was.
      But you should also realise that the examination committee often changes the marking on DII based on how particular things are handled by candidate who are fit to practice (that is why the points per question are not given in DII in the paper). They will often also accept alternative answers that are reasonable.

      So don't feel upset if we have something that you don't - you do not need the combined knowledge & experience of 3 DeltaPatents tutors to pass :-)

      Delete
  16. I would like to ask if you weighed the possibility of asking for early publication of PCT-SA immediately after adding the priority, rather than waiting for the ISA and doing the A 19 amendments. Would the early publication give them an earlier date for the provisional protection of A 67 EPC (subject to later amendments during the EP phase)? Isn't this advantageous for damages if it comes to infringement?

    MJ

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    1. Our answer doesn't go into every detail - we restricted it to the main points. Provisional protection can always be worth something on DII, and a couple of the tutors had it in their answers, but we are a little unsure how far to go with it. It would certainly be worth briefly mentioning it in your answer.

      Delete
  17. Felt good about DII after I did it but after reading our comments I think I missed important issues (lack of enablement of ribs!).

    I also found this questions really annoying to answer in that there was a lot left to what will happen in the future. I don't think I mentioned anywhere explicitly that the current claims cannot result in protection because it was obvious for me that they need to include to the claims what they want to protect and that they will have a chance when entering regional/national phases. More points I lost...

    Al least I got the addition of priority and re-filing of appeal (though not re-payment).

    Thanks for our fast answers and discussion!

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    1. In our DII methodology, we go through the step of assessing the sitation-as-is - what will happen if you do not actively intervene (if the client continues down the path the started). So not having claims gives no protection. But the number of points it gets varies - the most important situation for your answer and usually the points is the improved situation. SO you probably did not lose any marks.

      For the lack of enablement, see the comments above. We do not know how many points it can get, and it depends also on how well the issue was dealt with by the candidates who did the exam.

      Delete
    2. Thanks a lot for the response.

      Really appreciate that you guys posted the answers so fast and even reply on the weekend!

      I did use your books for preparation though I didn't have time to attend a course for D. I just keep my fingers crossed that it'll be enough.

      Keep up the good work and thanks again!

      Delete
    3. Thanksfor the compliments. We are keeping our fingers crossed as well :-)

      Delete
  18. I argued that the new priority could be added to PCT-SA within 26 mounths because the earliest priority dated does not change R.91.1(g)(IV) PCT. Does this make sense?

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  19. The Examiner's report has just been made available at the EPO EQE pages (Compendium) -- see also http://eqe-deltapatents.blogspot.nl/2016/07/eqe2016-results-are-out.html.

    The D 2016 got a pass rate of 44%, plus a 11% compensable fails, resulting in 55% of the candidates being happy, or at least satisfied, and 45% of the candidates failing.

    When comparing our answer with the Examiner's report, our answer is estimated to have attracted about around 53-56 marks out of 60.

    Missing items and items that are worth discussing:

    Q.1-a (Pcc w e-rib): we did not address lack of enablement of CH-BC for capsules with ribs in general, and hence did not conclude that priority was invalid for ribs in general and only valid for elliptical ribs. This was a foreseen error: the broad claim is invalid for other reasons – the exam papers from the last few years have all been designed to reduce the knock-on effect of errors.

    Q1-c / Q2-c: we discussed the lack of enablement of the broad generic rib capsule under Q2-c (improvements) instead of under Q1-c (current situation). We assume both approaches receive equal number of marks, especially as enablement is likely to be raised in opposition or in third party observation.

    Q2-d: we did not explicitly mention that lack of novelty was already raised as a ground of opposition, nor explicitly that D is prima facie relevant (without prima facie relevance, a late-filed document would not be admitted ). It is easy to overlook some opposition procedural aspects if focusing on subject-matter and appeal procedural aspects (time limit, language, fee)…

    Q3: we did not discuss PCC from X but without ribs.

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