Wednesday, 2 March 2016

D 2016 - our answers to the DI-part


Our answer to the DI-part of the D 2016 is given below.
Our answer to the DII-part is available in a separate post"D 2016 - our answers to the DII-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 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 02-03-2016 14:56"), 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), established case law 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 extent 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 step-by-step reasoning, citing specific legal provisions or other reference, such as an OJ EPO publication.

Click "Read more" to read our answer,
Roel, Pete, Jelle & Gregory


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 for the DI-part. 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.



Q.1
a)
- 14/7/15 + 10d [R.126(2)] + 2m [Art.108, R.131(4) EPC] => 24/9/15 (Thu) for notice

b)
- so notice of appeal filed on 18/9/15 was in time
- 14/7/15 + 10d [R.126(2)] + 4m [Art.108, R.131(4) EPC] => 24/11/15 (Tue) for grounds
b1)
- Withdrawal on 5/10/15 is before expiry of time limit for grounds, and no grounds filed,
- so reimbursement in full – R.103(1)(b)
b2)
- 5/10/15 is before 24/11/15, so statement of grounds filed in time
- Withdrawal on Feb 2016, so after period for filing grounds has expired
- Withdrawal was done after receipt of the communication from BoA under R.100(2): invites the applicant to file observations
- No oral proceedings set yet,
- Withdrawal immediate after receipt is within time limit set in the communication
- so reimbursement at 50% – R.103(2)(b)

Q.2
a)
- yes - PCT Art.8(2)(a), Art.4C PC
- filed within 12m: 7/2/15 + 12m [, R.80.2 PCT, R.2.4] => 7/2/16 (Sun) [R.80.5 PCT] => 8/2/16
- both filed by same applicant, MAXIMA
- same subject-matter as PCT-B and PCT-C have identical content
- no fees needed for PCT-B to accord a filing date – Art.11 PCT
- electronic filing at the EPO as rO is allowed - R.89bis.1 PCT & OJ 2015, A91

- IT office is competent rO – R.19.1(a)

- due to residency in IT (an EPC state) – R.157(1) EPC

- but EPO will not handle IA as it is in Italian, and not in En, Fr or Ge – R.157(2) EPC
- So EPO will transmit PCT-C to IB – R.19.4(a)(ii)
- EPO will be considered to have received PCT-C on behalf of IB
- and IB will be rO with filing date  = 8/2/16 (receipt by EPO) - R.19.4(b)
- So, priority will still be valid

b)
- IT company could have filed at IT office or EPO, but only competent ISA is EPO – AG-IP, Annex C; Art. 152 EPC
- EPO does not accept IT for search, but only EN, FR, DE – EPO-WIPO Agreement or "OJ 2010, 304 + OJ 2014, A40 + OJ 2014, A117"
- So translation into EN, FR or DE needs to be filed no later than – R.12.3(a) PCT:
- 8/2/16 + 1m => 8/3/16 (Tu)
- at IB as rO
- PCT-C will be published in the language in which it is translated (IT is not a language of publication, whereas EN, FR and DE are – R. 48.3.b PCT)
- if a request for preliminary examination is filed, EPO/IPEA will accept the language in which PCT-C is translated, so no other translation required – R.55.2.a PCT

Q.3
a)
- NL, LT and IT have closed their national routes – Euro-PCT Guide 121 – or AG-IP Annex B NL/LT/IT,
- So can only get patent there via EP-regional phase
- Must enter no later than 31m from priority – R.159 EPC
(Note: LT closed its national phase in 2014 – no entry requests possible on or after 4/9/14)

b)
- April 2014 + 31m [R.159(1), R.131(4) EPC] => Nov 2016
- So, 1 March 2016 is early entry
- Needed to do express request – done – Art. 23(2) PCT
- For request to be effective, all required acts of R.159(1) need to be done on 1 March 2016 as far as time limits did not expire – with 1 March 2016 replacing the 31m date – Euro-PCT Guide 428
- All required fees have been paid
- designation & examination fee may be paid later and were thus not “required” for entry – pay no later than 10/15 + 6m => 4/16

- Needed now:
- Translation – R.159(1)(a) – into EN, FR or DE

- Also needed, but no later than 4/16:
- file request for examination and pay examination fee – R.159(1)(f)
- pay designation fee – R.159(1)(d)

c)
- EPO was not ISA (it was RU), so EPO will do supplementary ESR – A.153(7)
- So:
- Pay claims fees for claims 16 and higher – R.162(1)
- Waive the R.161/162 communication – OJ 2011, 354
o
- Request PACE – OJ 2010, 352 or Euro-PCT Guide 441
- File request for examination, and pay designation & examination examination fee
- waive the R.70(2) communication

Q.4
a)
a1)
- Basis for grant is appln as filed, with 17 claims - R.159(1)(b)
- But no claims fees to be paid, so claims 16-17 will be deemed abandoned – R.162(4)
- and search will be based on claims 1-15 relating to INV1 only
a2)
- claim 16 deemed abandoned
- So sjm of claim 16 will not be granted via EP-E

- EPO does not allow an abandoned claim to be re-introduced if not found in description or drawings - GL A-E-VIII, 2.1.3 or J15/88 or EPG 605

- Claim 16 is in IA as filed, so claim may be reintroduced in a divisional without violating A.76(1)

- Any objection to lack of support – Art. 84 – may be solved by adding the text of claim 16 to the description – GL IV, 6.6, assuming that the appln & common general knowledge provide enough instruction to skilled person to carry out the invention over the breadth of claim 16 – Art. 83
- If it is not considered sufficient, claim 16 will not be granted and must be deleted

a3)
- Not via EP-E itself –it has no unity with claims 1-15, so its addition will not be accepted – R.137(5)
- Unsearched subject matter can only be pursued by a divisional – Art.76(1), G2/92

b)
- no claims fees paid on entry

- 15 claims may be pursued to grant, for claims 16-19 => 4 claims fees must be paid before grant  – R.71(4)
- within 4m of notification or R.71(3) communication

Q.5
- Last day to enter = 25/4/13 + 31m [R.159(1), R.131(4) EPC] => 25/11/15 (Wed)
- all documents necessary for entering filed => translation; req for examination
- But filing fee not paid – R.159(1)(c) => appln deemed WD – R.160(1)
- Further processing Art.121, R.135  available, no later than:
15/1/16 + 10d [R.126(2)] => 25/1/16
+ 2m [R.135(1)] => 25/3/16 (Good Friday)
=> 29/3/16 (Tu) – R.134(1)
needs completion of omitted act = pay filing fee
and payment of further processing fee = 50% of missed fee  - RFees 2(1).12

- As no filing fee paid, no Art.54(3) EPC effect – R.165

- Advise to create Art.54(3) effect, by pay filing fee with FP:
- Translation was already filed - R.159(1)(a)
- PCT-F  - priority valid, so effective date is f.d. JP-F (25/4/13) –Art.89 - before effective date of EP-G= 24/5/13 (no prio)
- PCT-F published promptly after 25/4/13 + 18m => 25/4/14, which is after effective date of EP-G
- FP will be successful, and EPO will publish translation – A.153(4)
- PCT-F becomes a 54(3) against EP-G and as it also discloses F, it destroys its novelty

- Advice to file opposition:
- Ground: lack of novelty over PCT-F – Art.100(a)
- At the latest by 25/11/15 + 9m [Art.99(1)] => 25/8/16 (Thu)
- Pay opposition fee in same time limit – Rfees 2(1).10


© Copyright DeltaPatents, 2016
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.

74 comments:

  1. Thank you very much! It sounds good!

    However, Q.2 b), the RO is the EPO for PCT-C => translation at the EPO ?

    As usually at the EQE, it takes (a lot of) time to answer properly to all the questions of part I. Time pressure and difficult to balance time between part I and part II.

    Polo

    ReplyDelete
    Replies
    1. Q.2 b)
      the translation is the translation needed for search.
      That translation has ti be filed with the receiving office - R.12.3(a)
      Which is the IB (sorry for the typo in the answer, which says IP)

      Delete
  2. @Polo: as to time balance: what was your aim, and wnhat did you do? 2h + 3h aim and stuck to that? Or more for DI based on practicing? Or more for DII based on your practicing?

    ReplyDelete
    Replies
    1. I needed about 2.5 h for each part.

      Somehow, time pressure is hard in any of a, b, c, d papers.

      Have studied for about 6 months and in total more than 600 hours which is close to half a year of real working time.

      Have spent vacations and weekends and some study time provided by employer.

      Have read 4000-5000 pages of text.

      Probably, it was still not enough (very hard) preparation.

      C is left for tomorrow.

      Regards,
      Pat-ER

      Delete
    2. For me it was also 2.5h for each part with a strong preparation essentially for part I (the same as Pat-ER (approximatively 6 months, weekends, ...). I hope it was enough ... not sure, it will depend on part II ...

      Polo

      Delete
    3. @Pat-ER: your study effort (assuming you also did the Pre-Exam before, which also took effort) is more-or-less what I "warn" people for that they will need for being well-prepared. It depends of course on many many things, but seems fair.

      @Pat-ER and Polo: my experience as tutor is that only a few people can do the DII in less than 3 hours, so I recommend my candidates to allocate at least 3 hours for DII (and it necessary, be prepared to skip one or two DI-questions to make 15-30 min extra available for DII).
      Which makes me ask:
      - did you decide in advance to use more than 2h for DI, so less than 3d for DII;
      - did you expect, frokm your practice, that you could do the DII in less than 3 h? If so, how much time did you decide to allocate max / min?

      Delete
    4. My objective was to allocate between 2 and 2.5h for DI, knowing that almost 2h45 is needed for part II. The difficulty is to stop writting in part I in order to start part II. I do not know if the best way is to begin with part II or part I. I decided to start with part I ... What do you generaly advice? The choice is really difficult and personal I think ...

      Delete
    5. My general advice is to allocate to the DII-part the time you need -- the DII part needs a lot of time investment in understanding and analysing, before you can really start scoring marks in concluding and advising. So, in time allocation, I suggest to give priority to DII and not to DI. In the DI, you can save time by skipping a question - in DII, you can only save time by skiing the conclusions that you are about to draw at the end - and that may be worth 15 marks in 30 min: very efficient!
      Further, you can pass /compensable fail based on DII alone, but not based on DI - I know several candidates that scored above 45 for the DII-part (old version 3h DI + 4h DII, and current dingle-paper version). With the DI alone you can by definition not get above 40...

      Whether you start with DI or DII is very very personal. I would always start with the DI part myself as I cannot get back from the DII-puzzels and DII-style reasoning to the DI-detailed questions and DI-style, but it is different for others. If I invite candidates to consider, I think about 1/4 starts doing DII first.

      Delete
    6. @roel:

      I have studied your d folder from your course very carefully and prepared standard sentences for all steps as suggested.

      During preparation, I could answer some d2 parts in 2.5 hours (not perfectly, but in a way giving me a nice feeling).

      Unfortunately, I could have probably written more in d2 in case of more available time. I nevertheless feel fine.

      Regards,
      Pat-ER

      Delete
    7. @roel

      regarding your question:

      Yes, I planned to answer d1 in 2.5h and I needed 2.5 hours.

      Subsequently, I hurried through d2.

      The steps up to finishing the patentability matters felt like a standard procedure. I further gave some advice and then discussed the new situation.

      Pat-ER

      Delete
    8. Roel, getting 40 for DI is full points :) I suppose you mean 30. From my experience taking the 3 hours for DII and stick to the 2 hours for DI is really crucial. I would also adivce to stick to the 3 minutes per point for DI. You may miss some statements which the Examining Committee wants to see, but for DII you have to hit it right on and if you don't make it to the conclusions you loose much more points than missing some statements in DI. Just my 2 cents.

      Delete
    9. Tasja, thx. No, I meant 40 as being the absolute upper limit, so yes, you are right that the practical max is not 40 - I would give a practical max for DI of 35 though, not 30 (there is almost every year people with a D score about 85, which is difficult to get with 30 for DI).

      And yes, your DII remark is also my key point: you need to come to the end with DII, as you score most marks at the end. So I advice many candidates to use 3.5h for DII and 1.5 for DI. You cannot do the whole DI in 1.5h, but if you skip the impossible questions (different for each person), you can still get 20 marks from DI in 1.5h.

      Delete
  3. Will I get marks, if legal basis is incorrect or if there is no legal basis given in my answer?

    ReplyDelete
    Replies
    1. I think the answer is yes, but it depends.

      If an argument is correct but no legal basis: in most cases, some marks will be given. For example, giving Rule 157(1) in stead of Rule 157(2) EPC for languages for filing a PCT with the EPO.

      If an argument seems correct but a legal basis is given that refers to anotger legal situation: probably no marks at all, as you base your answer on a wrong legal world. E.g., if citing Art.80, Rule 40 EPC in stead of Art.11 PCT where you argue "no fees need to be paid for a filing date" or "no repr needed for a filing date"

      But the exam committee usually does not indicate how the mark distribution is done - so what we (think to) know is based on "reverse engineering" and experience.

      Delete
    2. There are points for the answer and argumentation, and for legal basis. The balance is decided by the Examination Committee per question and often per citation.

      Delete
  4. Hi you educated Delta patents guys,

    Thank you very much for your efforts.

    Is your style of answering d questions sufficient for a true exam situation or have you provided a sort of summary?

    Somehow I write way more text. Probably , I have therefore time pressure all the time, instead of focussing on the serious matters.

    Pat-ER

    ReplyDelete
    Replies
    1. The DI answers that we give are in a style that is sufficient. We may have missed some marks, but as we indicate, we think we would get about 35 marks for the answer as we show it.
      Remember that your aim at the exam is to show the exam committe that you master the law. You donot need to write essays about the law, but you need to apply the lawe to the facts of the case and come to an answer/advice - while citing all the law explicitly and spefifically in DI, but also in DII it is about showing how to apply the law (but woithout the burden of citing Art, Rules, OJs and all that).
      If you look in earlier compendia, you will also see that some candídate's answer are quite concise/ telegram style and bullet-wise, even for DII.
      If we comment on candidate's homework or correction papers, we most often indicate (where) to write less.

      Delete
    2. Also our answers are edited down afterwards based on all the inputs - my actual answer is usually about 1-1.5 pages of EQE paper (leaving spaces) per DI question. We have also left out some of the explaining that you would normally include in your answer.

      Delete
  5. 2 - b (language of PCT-C filing to the IB). Is it necessary to assume that the EPO is selected as the ISA? Is it possible to select other ISAs?

    Drumpftower

    ReplyDelete
    Replies
    1. @drumpftower (lol): when the IB is the rO, you only retain the possibilities that you would have had if you had filed at one of your competent rO's - in this case IT or EPO. In AG-IP, Annex C both only allow EPO to be ISA.

      Delete
  6. Hi,

    thank you for your answer.

    I have written the d paper in German language and the provided candidate answers in German language are totally different to your style of answering.

    I always run out of time in d1. I typically need 2.5 hours for d1.

    E.g., regarding question 2, I have copied a lot of the text from Singer-Stauder (adapted to the situation). I.e. 3 pages of text on exam paper. It was possible to get 10 marks here (an important question), if I remember correctly.

    Pat-ER

    ReplyDelete
    Replies
    1. I would expect that for 10 marks, using line spacing 2, 1,5 page can be enough -- how much lines wpuld you need if you copy of answer of Q.2 to exam paper with your "font size" and at line spacing 2?

      The 3 min per mark for DI is how DI is designed - and what is doable if you are well prepared (even though a challenge), esp of you skip/give up on the topics you donot know.

      Delete
    2. If you look in our model solutions, or the "possible answer" as well as the "candidate's answer" of earlier D papers, you never see a 3-page answer for a 10-mark question.

      Copying the relevant parts of a legal provision while applying them to the facts of the case can be useful and efficient. But copying complete legal provisions and complete paragraphs from reference books, such as Singer-Stauder, usually means you copy a lot of non-relevant information. Furthermore, you donot need to show -sorry for saying it a bit bluntly- that you can copy a legal provision word-by-word; what you need to do is to show that you can apply the law. In our methodolgy courses and in our correction paper program, we give a lot of attention to efficient answering.

      Delete
    3. I have answered all 5 questions and have not skipped any of them.

      Somehow your style of answering differs (hopefully only your style as I agree with a lot of your answers).

      I do not use line spacing. I use new page for any matter.

      2 marks per page and I am fine with d.

      Pat-ER

      Delete
    4. Hi,

      this was an extreme example. I only copied certain passages from Singer-Stauder as it referred to an Italian applicant filing a pct application with the epo.

      I think it was a true match.

      Have also tried some of your very great and helpful courses.

      Nevertheless, THIS style of answering differs from your courses.

      If I will have passed the d paper, than because of your courses. Thanks.

      Pat-ER

      Delete
    5. If a true match, I would also be very tempted -and actually also do it- to copy the relevant passages: it then takes less time than "cutting out" the relevant parts, as there will be hardly any irrelevant parts. :-)

      Delete
    6. Hi,

      I would also like to thank you for your efforts.

      You truly help us candidates with your blog and your support and advice.

      Another web-page I can recommend is kandidatentreff.de

      (Hopefully this post is allowed here) The page is in German language, but I think that questions in other languages are also welcome here.

      Delete
    7. @Pat-ER: these answers are limited to the very focus of the answer, and have been edited down for this blog. When I do the questions myself, I use 1 - 1.5 pages (with spaces) for explanation, some side tracks and some mistakes :-)

      Delete
  7. Ouch. I see it. A 152 EPC.

    ReplyDelete
    Replies
    1. And AG-IP Annex B IT: http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexc/ax_c_it.pdf

      Delete
  8. Examiners_Big_Toe2 March 2016 at 19:39

    As to the Question on checking the PCT priority, I wasted much time finding the right basis in the PC for each aspect (e.g. same applicant, same invention etc.)

    I am a bit disappointed that you do not seem to allocate any points to that...I could have used that time very well for checking other stuff :/

    ReplyDelete
    Replies
    1. Examiners_Pinky_Toe2 March 2016 at 19:43

      Also, whats with re-establishemnt for missing the filing fee in question 5? Not a good choice but my books told its theoretically possible (may have been mistaken under time pressure though)

      Delete
    2. I understand your comment. Our answer reflects what we expect to be reasonable - the exam committee may expect more, or less, detail.

      Our choice is based on the PCT determining priority especially procedurally. Paris Convention therein gives the basis, but in the end, substantial validity of priority is a matter of national law - Art.27(5) PCT-, which includes the meaning of "same invention". As that was all "trivially" OK, we did not expand on its details with legal basis, we only mentioned same inv, same sjm, same app. The 12m period may be considered procedural, so there a specific reference to Art.4C(1) can in my view be justified.
      Furthermore, there is a lot to be discussed in this question, so I would recommend to first focus on the core of the question, i.e. the parts where u can score marks efficiently -and which you know that will also be awarded marks for sure- before (if at all) spending time on the parts that you can consider background information.

      Delete
    3. @ Examiners_Pinky_Toe2 w.r.t. RE of filing fee (available as PCT allows for that if entry is missed): to me it seems unlikely that RE can be succesful as you did meet the same time limit for other acts -- how can you succesfully argue all due care? Also no info as to all due care in the question, so not expected to address RE (as you need all the facts to be able to answer). Further, RE is more expensive and less certain, so would be a bad advice.

      Delete
    4. @ Examiners_Big_Toe - Traditionally, there are very few points for PC legal basis. EPC is a self-contained system, so on EPC questions, it is not required at all. PCT refers to PC, but PCT has its own implementations for time limit calculations, the 12 months etc. Typically you would only ever need to refer to Art. 4C PC, and where relevant Art. 4C(4).

      Delete
    5. @ Examiners_Pinky_Toe: the RE possibility is theoretically available via PCT. The exam is in general more practical - you must choose the simplest, most reliable remedy which is FP. This is what you would do in real-life. RE is relevant if the deadline for FP had expired, but in this case there is still almost a month to request FP by paying fees. Of course, if you briefly mention it after explaining the FP, you are not going to lose points.

      Delete
  9. Thanks for the fast reply :)

    I agee that RE makes no sense in question 5, but its discussed in the PCT-Guide of the EPO..so I hoped to score some cheap points by mentioning it and -as you suggest- discussing that its not likely to succeed and expensive. Maybe its 0.5 points for being (more or less) clever

    As a general matter, I liked what you did in the C-book with working out the basic problems of same invention and first application..I think this could work out for more basic re-occuring problems in D1. It would be great to see a commented study guy from you with some focuse on these basic issues and some flow-diagrams ( which we patent guys just love ;))

    Also, adding a register to your L and D-question books would be great. For example, the question on early entry and speeding up examination is answered somewhere in the D-book with all the legal basis you need...would be nice if you could find these things quickly with a register.

    Other than that, thanks for the good work!

    ReplyDelete
  10. Hi there,

    regarding Q4-a2, I wonder, why you come to the conclusion that sjm of claim 16 can still be claimed.

    In the German version, it says that claim 16 is not mentioned in description or drawings.

    Due to non-payment, the claim will be deemed to have been abandoned.

    According to (J 15/88), Guidelines A-III., 9 and Nr. 605 of the Euro-PCT-Guide:
    "Features of a claim deemed to have been abandoned and which are not otherwise to be found in the description or drawings cannot subsequently be reintroduced into the application and in particular, into the claims."

    Therefore, I reached the conclusion that, though claim 16 is originally disclosed in the originally filed application documents, it cannot be reintroduced into a claim.

    Thanks for reading,

    Xentres

    PS: Even with (possible) 30 points in DI, I will not succeed - had serious time problems in DII and only answered question 1 of DII. Good Luck everyone.

    ReplyDelete
    Replies
    1. Hi Xentres,
      I agree with our argumentation. However, we choose to conclude it would be possible to reintroduce it as it was in the international application as filed - Art.123(2). We considered to refer to J 15/88 and the Euro-PCT Guide section to add a reservation, but decided to not to.

      Delete
    2. @ Xentres - you are probably correct. This is a case of procedural abandonment (to improve procedural efficiency), so it will always be possible to file a divisional for the claim - I will change the answer.
      The other solution here is to amend the description by adding the text of claim 16 in response to the R.161/R.162 communication.

      Delete
    3. As far as I'm aware, you can't reintroduce abandoned subject-matter in a divisional either. A divisional can only contain subject-matter that is still "present" in its parent, i.e. not unequivocally and definitively abandoned, at the time of filing the divisional (G 1/05, r. 11.2). Here, the subject-matter of claim 16 cannot be reinstated in the parent. So, that subject-matter has been irrevocably lost. Unless a divisonal was filed before the time limit for paying claims fees expired.

      Delete
  11. Thanks Roel for your fast answer,

    I wonder then, why this section (nr. 605) is part of the Euro-PCT guide if it does not apply to PCT-applications?
    Or is there any jurisdiction in favor of Euro-PCT applications regarding abandoned claims?

    Since Q4 explicitly states that there is no basis in the description and drawings, I was of the opinion that this was a model case for the consequences in section 605 of the Euro-PCT guide.

    If I follow your argumentation solely based on Art. 123(2) and exchange R162 epc with R135 epc, I could then also try to argue against the restriction to searched subject matter under R135(6) EPC, since claim 17 is also part of the original application as filed.

    Also, the section 605 reads imho that the abandoned claims cannot be reintroduced in any part of the application, especially into the claims. So there should be no possibility of including subject matter of claim 16 into the description any more.

    I am therefore still inclined to disagree with your argumentation. But until the examiner's report, noone knows for sure.

    Thanks for the discussion!

    Xentres

    ReplyDelete
    Replies
    1. @ Xentres - you are probably correct. This is a case of procedural abandonment (to improve procedural efficiency), so it will always be possible to file a divisional for the claim - I will change the answer.
      The other solution here is to amend the description by adding the text of claim 16 in response to the R.161/R.162 communication.

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    2. @ Xentres - to add to Pete's answer and to "overrule" my earlier answer to you: with both the Guidelines as well as the Euro-PCT Guide saying it cannot be reintroduced, and the text if the question closely matching the text of those paragraphs of the GL and EPG, your argumentation must be correct. So we updated our answer accordingly.
      Thx for pointing out.

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    3. Isn't there a distinction between the subject matter of claim 16 and the text of claim 16, i.e. the thing and the name of the thing? In that sense, if claim 16 was dependent on any of claims 1-15, then the subject matter of claim 16 still included in the claimed subject matter, whether or not the text of claim 16 is included or not. At least, that is how I have been interpreting 'subject matter of...' to mean.

      Wittgenrock

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    4. @Wittgebrock: if you mean that the subject-matter of dependent claim 16 is still in the scope of protection of the claim it depends on, you are correct.
      But that is not what is asked: it is asked whether the patent can be granted including the subject-matter of claim 16, i.e., with a claim or the description claiming or at least describing the subject-matter. It would be wrong to say that a patent claiming a car (in general wording) is a "patent that includes" a formula-1 car -- which would be consistent with your interpretation --, even though the scope of protection does indeed include a formula-1 car.

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    5. I respectfully disagree. A claim to a car does include a claim to a forumla 1 car. Genus - species.

      It doesn't matter if a formula-1 car could even be patented although a car has been patented.

      W-rock

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    6. @W-rock: We agree fully that a 'formula-1 car' (as a product in real life) is in the scope of protection of a claim directed to the subject-matter 'car'.
      But if the question is whether a patent is 'granted including the subject-matter formula-1 car', that requires the skilled person to directly and unambiguuoysly derive the 'subject-matter formula-1 car' from the patent. If that formula-1 car appears nbowehere in the descriptions and the drawings (and the claims), the skilled person only reads the generic concept (subject-matter) 'car' in the patent.
      So "a patent will be granted including specific subject-matter" is FALSE if only generic subject-matter is descrivbed, even though the statement "a patent as granted will protect specific subject-matter" is TRUE

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    7. Thank you very much for your opinion.

      I think the dispute perhaps is in the meaning of include. I would not dispute that a formula 1 car would not be directly - la-la ala A 123, but that, to my interpretation, is not the issue to answer whether or not the patent would include the subject matter or not. We're not talking about amending the application, but whether subject matter is included, either inherently or explicitly.

      I dispute that include requires the formula 1 car to be directly derivable. I interpret whether the "subject matter of claim 16 is included in the patent" to mean, would a formula 1 car infringe the patent of a car? If the answer is yes, then the subject amtter is included. If the answer is no, then the subject matter is not included. My opinion is yes.

      Wittgenrock

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    8. @W-rock: I agree with you, it depends on the meaning of include. One problem is that if one reads (or drafts) a statement and does not doubt any of the words (and, when drafting, had actually carefully chosen a certain words because if the meaning it has to you and you think will have to anyone), it is not always easy to immediately get the point if someone else doubts is. In this case, I understand your point, but I can (sorry) still not read it as "it is in the scope of protection" -- but you did raise doubt with me whether maybe that was actually intended.
      (one reason being that I prefer not to say that "subject-matter Y is within the scope of protection in claim 1", but "product Y (formula-1 car) falls within the scope of protection of claim 1, clams subject-matter X (car)": the protection that a patent confers is to prevent others do use/make/sell/offer products - not subject-matters which are abstract terms. "Ceci n'est pas une pipe".
      So I am not (yet) convinced by your arguments, I get your point, and you may well have a point. (Btw, not easy to find a way to rephrase to improve it...)

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  12. Guideline E-X-6 does not seem to say the same in english and in french.
    In english, one can understand that the start date for the two months period before filing the appeal is the date of the notification of the decision.

    In french, it clearly says that the start date is the date of reception of the decision.

    This had consequences both in D1 and D2.
    -------------
    See the texts below.
    ----------------------
    English

    http://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_x_6.htm

    6. Time limit and form of appeal

    Notice of appeal must be filed with the EPO within two months of the date of notification of the decision appealed from. The notice is not deemed to have been filed until after the fee for appeal has been paid in the amount laid down in the Rules relating to Fees under the EPC. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed.


    -------------
    Français

    http://www.epo.org/law-practice/legal-texts/html/guidelines/f/e_x_6.htm

    6. Délai et forme

    Le recours doit être formé auprès de l'OEB dans un délai de deux mois à compter du jour de la signification de la décision. Le recours n'est considéré comme formé qu'après le paiement de la taxe de recours dont le montant est fixé par le règlement relatif aux taxes afférent à la CBE. Un mémoire exposant les motifs du recours doit être déposé par écrit dans un délai de quatre mois à compter de la date de la signification de la décision.
    ---------------

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    Replies
    1. Article 108 EPC, 1st sentence does not leave any room for misinterpretation - it reads:

      Notice of appeal shall be filed, in accordance with the Implementing Regulations, at the European Patent Office within two months of notification of the decision.

      Le recours doit être formé, conformément au règlement d'exécution, auprès de l'Office européen des brevets dans un délai de deux mois à compter de la signification de la décision.



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  13. In the event of the start date for the 2 months period for filing an appeal being the date of the reception of the decision, the 10 days rule will not apply.

    ReplyDelete
    Replies
    1. It does apply, without doubt - Article 108 EPC, 1st sentence: "notification", "signification", "Zustellung"

      Delete
  14. Can I get minus points in d2?

    I made a mistake regarding patentability of cup & triangular rip in d2. Cup & triangular rip should be patentable as it is an alternative to elliptical rip.

    ReplyDelete
    Replies
    1. There are no minus points on either the C or D papers. You start with 0, and get points for everything that is correct. Incorrect points just lose you some time. If you contradict a good statement with an incorrect statement, then you will not get the points for the good statement, of course.

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  15. For D1_Q1 and D2 opposition.
    It is not said that the notification of the decisions in D1 and D2 have been made according to Rule 126 or Rule 127 EPC.
    It could also have used Rule 128 EPC.
    In this last case, the 10 days rule is not applicable.

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    Replies
    1. No, cannot be using Rule 128, as decisions needs to be notified by registered mail with advice of delivery - R.126(1)

      Delete
    2. Does "mail necessaraly" imply to use a postal service (R126) or to use electronic communication means (R127). That is not true in real life.
      So for me the 10 days rule is not compulsory as the notification means is not specified and a registered mail can be notified by the 3 different means (postal services, electronic means, delivery by hand) if not specified in the paper.

      Delete
    3. Delivery by hand is not registered mail, nor registered mail with advise of delivery.

      Notication by postal services as well as notification by means of electronic communication has the 10-day Rule - R.126(2) resp. R.127(2)

      Delete
    4. Roel,
      Thank you for your explanation.
      Your view must correspond to the expectations by the EEQ.
      But in real life I have received registered letter by hand from my boss or through a bailiff.
      I just had to sign in return.
      Regards,

      Delete
    5. The questions are designed to be as close to real-life as possible. Communications from the EPO are never notified under Art.128 in practice. You are correct - theoretically if you are at the EPO for oral proceedings or for an interview, they could hand you a decision before you leave. But if it was such an unusual situation, they would definitely mention it in the question.

      In general, the 10 day rule is an assumption made by the EPO - they assume that you received the communication within the 10 days. As this happens in 99.99% of all communications, then it saves a lot of work tracking delivery and putting it into the system.

      When we receive post from the EPO I think that in almost all cases someone signs for them. This is a proof for the courier who delivers it, but it in general does not trigger any time limit.

      If you actually receive the communication within the 10 days, you are legally allowed to use the 10 days (note that in the DI-Q1 and DII, they give you the day of receipt - both within 10 days - so you don't have to speculate). This makes the time limit to respond predictable at the EPO and in your office without having to worry about actual deleviry dates and doing a lot of extra work on both sides.

      The "advice of delivery" mentioned in the EPC is a sheet that the receiving party signs and sends back to the EPO. This sheet ends up in the file. This date is also not used legally.

      If you actually receive it later than 10 days, then you can take steps to have the period run from the actual rceipt date if it was not your fault (delays in your own office/company do not count). You inform the EPO - R.126(2) last sentence - and they will check with the courier when it was actually delivered at your location. If there was a delay, then the time to respond will run from the actual receipt date. The EPO determines what this actual receipt date was - R.125(4)

      If the EPO finds out that the communication was never sent (or sent to the wrong address), they just dispatch the communication with a new date.

      However, on the exam, if there is a problem with delivery they will mention it - they do not leave out important facts to trick you.

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    6. Thanks Pete for this explanation.

      There remains an issue in the application of the 10 days rule (R126(2)) as one needs to know the day of "handover to the postal service provider" and this information is given nowhere in both papers.
      That why one is inclined to use the only given information needed in A108 which is the day of the notification of the decision.
      And using the day of the notification of the decision implies no extra days.

      Delete
    7. Pete,
      With your understanding, I don't see the difference between
      "within two months of the communication" (like in Rule 135)
      and
      "within two months of the notification of the decision" (like in article 108)

      Delete
    8. Probably to get full mark would require to notice that the the day "handover to the postal service provider" is between the day of the decision and the day of the notification of the decision. So the last day for appeal would be hypothetical.

      Delete
    9. @ Anonymous5 March 2016 at 19:01
      The date of handing over is the date indicated on the communication. If you don't know this, it makes it difficult to figure this out from the facts given. I had a quick look in the Guidelines, but I couldn't find it explicitly mentioned - E-I, 2.3 just mentions the day of handing over. But it is mentioned in every reference book I know, and it is completely true - if the communication does not go out on the date indicated, it is given a new date. There is case law in which this is explained.

      Even if you receive it in less than 10 days from the date of the communication, you are legally allowed to make use of the 10 days - this allows you to calculate the very last day to respond.

      I am surprised that you did not see this in your preparation - every practicing European patent attorney and formalities officer should know this, every reference book explains it, we have countless questions in our question books on this, and the phrasing of these questions is consistent with past D papers.

      Delete
    10. @ Anonymous5 March 2016 at 19:06
      Unfortunately, the law is not always written in a consistent way. In R.135, they mean "two months of the notification of the decision"

      The idea of the system is to split two possible issues - any time limits triggered by a communication from the EPO begins from the notification - this is a minimum time limit that the applicant (or representative) has to prepare a response.

      The notification is set at default 10 days from the date of the communication. However, if there are some issues due to a mistake by the EPO or a delay, then the actual receipt is considered the notification.

      Delete
    11. @ Anonymous5 March 2016 at 19:01L:
      The date of handover to the EPO interbal post services does not play a role for R.126(2): 126(2) adds 10 days to the date of the communication (date on top right).
      The date of handover only plays a role as to when the competent department can still reopen the proceedings - G 12/91 -. The date of handover is given on the lower right corner of the communication.

      Delete
  16. Hello everybody,

    At question 4a1), I completely overlooked that fact that the Applicant did not pay any claims fees. I rather consider that the Applicant did not pay any additional search fees. As question 4b was directed to claims fee, I understand that I should have spoken about another topic in question 4a1 than claims fees.
    However, I think you (Deltapatent) are right about it. Nevertheless, I am wondering why you cannot argue that the second invention will not be search. I don't remember exactly how I did it, but I remember that I spoke about R 164(1)(c). (case where the EPO draw up the supplementary ESR only for part of the application in respect of which search fees have been paid).

    First-time-sitter-a-bit-disappointed

    ReplyDelete
  17. 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 35-37 marks out of 40.

    Missing items and items that are worth discussing:

    Q.1: we did not mention that R.132(2) requires a minimum if 2m. It may however be challenged whether R.132(2) applies for communications from the Board, as the Board is not bound by the Rules, but defines in its own Rules of Procedure of the Boards of Appeal [OJ 2007, 536] time limit provisions, e.g. in Art. 12 RPBA

    Q.2: we did not mention Art.11(4) which sets an international application that has accorded a filing date equivalent to a regular national application

    Q.3: we did not mention that PCT-D was published in Russian under R.48(3)(a) PCT

    Q.4: we did not mention R.137(3). It may however be challenged whether it is correct and appropriate to mention R.137(3) under a3): the applicant has the opportunity to file amendments at own motion at entry [R.159(1)(b)] as well as in response to the R.161(2)/162 communication. R.137(3) only becomes applicable after this stage.

    ReplyDelete
  18. Note to Q.4:

    The "FAQ - applying for a patent" (http://www.epo.org/service-support/faq/own-file.html#faq-1021) writes the following as answer to the question "I intend to enter the European phase with an amended set of claims. My international application comprised 25 claims. Upon entry, I delete claims 21-25 and pay five claims fees, for claims 16-20. Will the subject-matter of claims 21-25 be deemed to be abandoned under Rule 162(4) EPC?"

    "No. Claims fees are due only for claims which are still in the application documents on which the European grant procedure is to be based (Rule 162(1) EPC). They must be paid for the 16th and each subsequent claim within the 31-month period (Rules 162(1) and 159(1) EPC). If they are not paid in “due time”, i.e. within the 31-month period, they may still be paid within an additional period of six months set in the communication under Rule 162(2) EPC. If they are still not paid in “due time”, i.e. within the additional six-month period, these claims will be deemed to be abandoned under Rule 162(4) EPC. Rule 162 EPC thus uses the term “due time” twice, in paragraphs 2 and 4, to refer to two different periods. Deemed abandonment occurs only if claims fees are not paid within the additional six-month period.

    This is illustrated by the following examples:

    (A) The international application comprised 25 claims. Before expiry of the 31-month period, claims 21-25 are deleted (i.e. an amended set of 20 claims is filed within the 31-month period) and five claims fees (for claims 16-20) are paid.

    (B) The international application comprised 25 claims. After expiry of the 31-month period, but before expiry of the six-month period set in the communication under Rule 162(2) EPC, claims 21-25 are deleted (i.e. an amended set of 20 claims is filed) and five claims fees (for claims 16-20) are paid.

    In both examples (A) and (B), claims 21-25 will not be deemed to be abandoned under Rule 162(4) EPC. They were deleted before expiry of the additional six-month period, and claims fees were paid for claims 16-20. Thus, on expiry of the additional six-month period the application documents on which the European grant procedure is to be based contained no claims for which claims fees due had not been paid.

    In the following situations, in contrast, claims will be deemed abandoned under Rule 162(4) EPC:

    (C) The international application comprised 25 claims. Before expiry of the six-month period set in the communication under Rule 162(2) EPC, no amendments are made and five claims fees (for claims 16-20) are paid. Claims 21-25, for which no claims fees have been paid within the period under Rule 162(2) EPC, are deemed to be abandoned under Rule 162(4) EPC.

    (D) The international application comprised 25 claims. Before expiry of the six-month period set in the communication under Rule 162(2) EPC, an amended set of 22 claims is filed and five claims fees (for claims 16-20) are paid. Claims 21 and 22, for which no claims fees have been paid within the period under Rule 162(2) EPC, are deemed to be abandoned under Rule 162(4) EPC.

    Features of a claim deemed abandoned under Rule 162(4) EPC which are not otherwise to be found in the description or drawings cannot subsequently be reintroduced into the application and, in particular, into the claims. “Deemed to be abandoned” means that the application is processed as if it never contained the claims for which the applicant did not pay claims fees."

    So, if 25 claims are amended back to 15 on entry or in the 6m period of R.162, the subject-matter of the 10 deleted claims CAN be reintroduced in the claims, also if not otherwise found in the description, as they are part of the application as filed -- and not abandoned with retroactive effect which would be the case if deemed abandoned due to non-payment of claims fees.

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  19. Hello Delta Patents team...
    (a bit off topic...) I have sat the EQE for the first time this year and perceived it as quite painful in spite of a lot of preparation. I wanted to thank you a lot for your enthusiasm and support, which makes it a lot easier to struggle through this!! Thanks A LOT and very best wishes!

    ReplyDelete