Wednesday, 8 March 2017

D 2017: our answers to the DI-part


The DI part of this year's D had a variety of topics and was -in our view- one of the more difficult DI papers. Scoring about 20 to 25 marks within 2 hours seems however feasible for a well-prepared candidate. How many marks one can achieve does not only depend on the legal knowledge and familiarity with the material, but also depends strongly on the strategy chosen for the D paper as a whole, especially how much time a candidate allocated for DI, how many marks were targetted, and how the candidate planned to deal with and actually dealt with difficult questions (skip or struggle, impose time limit or continue until no more ideas, ...).

We want to emphasize that our answer is not a typical answer of a candidate sitting the exam. It is the combined or at least cross-checked answer of experienced tutors, that could literally (not) sleep overnight to reconsider the answers before posting them. But even experienced tutors are not flawless, so our answer may not be fully complete, or even wrong as to certain aspects. We welcome any comments!

The outline of our answers:


Q.1 (6 points)

7/8/13 + 31m [R.159(1), R.131(4)] -> 7/3/17 = today
so need to enter today to prevent

a)
  • amend claims to only indep claim 1 @ entry – R.159(1)(b)
  • waive R.161/162, request PACE examination – OJ 2015, A93 & A94
  • respond asap to R.71(3): pay and translate
  • file divisional after entry and before mention of the grant to just claim 2 – Art.76(1), R.36(1)

b)
  • enter with both inventions, unamended
  • wait for R.164(2)(a) invitation to pay for second invention
  • pay the additional search fee - RFees 2(1).2
  • earch results will then be annexed to the first R.71(1) – R.164(2)(b)
  • and you can choose from the two – R.164(2)(c)

Q.2  (6 points)

Note: at first sight it seemed not so clear what was expected. On second sight, it appears that the question's subject is how to register a transfer of the patent during opposition in a) and how to transfer the opposition status in b), with the complication of a change of representative.

a)
  • new repr needs to be appointed as D is US client – Art.133(2)
  • although not needed as new rep is expected and D is new party, optionally file PoA for new representative - R.152(1), OJ 2007 – SE3 – L.1
  • register transfer to EPO of patent from C to D at EPO – R.85, R.22-:
    • provide evidence of the transfer: the signatures of both parties C and D need appear on the documents submitted as evidence of the transfer – Art.72, GL (2016) E-XIII, 3
    • pay administrative fee – R.22(2), RFees 3
  • new repr files amended claims

b)
  • Mr.X must inform EPO of the transfer of the company assests from B to E – G 4/88, and give evidence – R.85 mutatis mutandis
  • Oppo status is then transferred to E – G 4/88
  • Mr.X does not need to file a PoA for representing E, as first prof rep for this party – OJ 2007 – SE3 – L.1 


Q.3  (4 (!) points)

  • today is end of 12m priority period – Art.87(1)
  • so need to file today and get today as the filing date to benefit from priority
  • indicate EP patent – R.40(1)(c)
  • my contact details are enough to be able to contact applicant  - R.40(1)(b); GL (2016) A-II 4.1.2 (a)
  • file by reference – R.40(1)(c), R.40(2): indicate JP12345, JP, 7/3/17 & indicate that references replaces description, drawings and claims (cannot be sure that we can file w/o claims, as they may be broader than the description)
  • file certified copy of JP12345 within 2m, so by 7/5/17 [R.134(1)} -> 8/5/17 – R.40(3)
  • file translation into En,Fr or DE within same period – R.40(3)

Probably not needed as it is a 4-mark question:

  • file declaration of priority – R.52(2) within 16m from prio, so by 7/3/16+16m->7/7/17 (Fri)
  • no need to file two certified copies, one is enough – GL (2016) A-II, 4.1.3.1


Q.4  (6 points)

  • the tel interview of June 16 is not enabled, so not prior art vs EP-F
  • US-P is not an EP-application so cannot be Art.54(3)
  • the info that is accessible on the website of F at a payment is Art.54(2) against EP-F: Aug 16 is before Dec 16
  • no prior art shows TEL2, so EPF’s claim to TEL2 is novel
  • the info that is accessible on the website of F (TEL1 with ANT1) + common general knowledge (ANT2 better indoor reception) destroys inventive step of EPF’s claim to TEL2 – Art.56
  • prio to US-P would not help: not same invention
  • so TEL2 is not patentable


Probably not needed:

  • a new EP claiming prio from US-P would be art.54(3) against EP-F, but TEL1 is not the same as TEL2, so EP-F would be novel over such new EP

Q.5  (10 (!) points)

12.2.16 + 12m -> 12/2/17 (Sun) -> 13/2/17, so filing on 14/2/17 in princple too late to have valid priority

a)
  • but if after 12m and before 14m, priority claim is not considered void in international phase
  • so we could just request to add a priority claim using R.26bis.1(a) until the latest of:
    • 16m from added pri: 12/2/16 + 16m [R.80.2] -> 12/6/17 (Mon)
    • 4m from filing: 14/2/17 + 4m -> 14/6/17 (Wed)
  • so until 14/6/17
  • by a notice to the rO=EPO or IB – R.26bis.1(a)

b)
  • 31m limit recalculated from new earliest prio-date – R.26bis.1©
  • so changes from 16/2/16+31m->16/9/18 to 12/2/16+31m->12/9/18 (+ possible R.134(1) extension - no 2018 calendar provided)

c)
  • priority period was missed, so EPO will invite to correct and notify about possibility to do restoration - R.26bis.2(a)
  • priority period was missed despite all due case, so can request restoration of prio before rO = EPO – R.26bis.3
  • within 13/2/17+2m [R.26bis.3(b)(i), R.26bis.3(e)] -> 13/4/17 (Thu)
  • argue all due care – R.26bis.3(a)(i) & (b)(i) – and give evidence –(b)(ii)
  • with rO=EPO
  • pay fee – R.26bis.3(d), RFees 2(1).13
  • then priority period deemed met
  • if prio declaration was not added before rO as described under a), can still ad it now, within the same 2m time limit – R.26bis.3(c)
  • dOs will recognzie restoration if succesful - R.49ter.1(a)


Q.6  (8 points)

a)
  • filing fee R.38(1), RFees 2(1).1
  • page fees for pages in PT > 35, i.e. 32+4+1(abstract)-35=37-35=2, R.38(2), RFees 2(1).1a
  • search fee R.38(1), RFees 2(1).2
  • note: no claims fees: as not over 15, R.45(1)

b)
  • university from PT so entitled to get a filing fee reduction if filing in PT
  • need to file descr in PT
  • need to file declaration R.6(4)-(7) to get reduction of 30% of filing fee (basic plus page fee) - R.6(3), RFees14
  • use online filing and not post or paper filing: EUR 120 vs 210 filing fee, minus 30%
  • so if filing in PT and online: (120 + 2*15) * 70% = EUR 105
     
  • filing in English would be 3 pages less and no page fees, but no 30%
  • so if filing in English and online: EUR 120
  • filing in PT, with declaration that applicant is a university, is cheapest

c)
  • replenishment too late, so paid too late – AAD 7-, so FP needed – OJ 2014, A26 (“general provisions of the EPC apply”)
  • as automatic debiting was already active,  FP fee will be deduced on the last day of the period – AAD 6.1(g)
  • so need to make sure there is enough money then for missed fees + 50%
  • apart from that, no other action needed

Looking forward to read your comments!

Please do not post your comments anonymously: it is more easy to communicate with a person having a name. Nicknames are fine, real names as well.

If you are looking for the DII discussion: it can be found here.
If you are looking for first and general impressiona about D 2017: it is here.

Roel, Pete, Grégory

(c) DeltaPatents 2017

27 comments:

  1. To me Q4 is unclear:
    EP-F claims prio of US-P showing TEL1. Tel 1 is a "new smart phone" having ANT1. The questions is what is a "new" smartphone and how is this linked to ANT1?
    If the phone as such is new (and can be separated from ANT1), then the priority of US-P should be valid for this new aspect?
    If it is not new, should not be a "generic" smart phone + general knowledge of ANT2 be enough for inventive step?

    ReplyDelete
    Replies
    1. The question is not whether TEL1 is patentable, but TEL2.
      For that it does not matter whether TEL1 was patentable in July 2016.
      TEL2 is TEL1 with ANT1 replaced by ANT2. TEL1 on the website of F, with ANT1, is Art.54(2) aainst the TEL2 claim in EP-F: TEl2 does not benefit from priority.
      So, with all the facts given, you can conclude it is not inventive. So you can perfectly well answer the question.
      Any speculation as to whether it would also not be inventive over other smart phones is not needed, and will cost you time that you need elsewhere.

      Delete
    2. Tim - Hi Roel,

      for Q6(c), could the rule of surharge of 10% ((ADA) 6.5(b))apply, given the fact that the amount is not exceeding euro 150?

      Delete
    3. No: for ADA 6.5 to work, it is required that there is enough money on the account when the period expired, and it was not in this case. See ADA 6.5(a) "provided the account contained sufficient funds on the date on which the time limit expired". There was not, so it does not work.

      By the way, the Q is about automatic debit order, so you need a AAD-reference, not a ADA-reference. And there is no RFees 7(3)/(4) rule in the AAD.

      Delete
  2. if TEL1 = TEL (new+inv? smart phone) + ANT1
    EP-F relating to TEL2=TEL+ANT2 claims prio of US-P showing TEL and being filed before the disclosure of TEL1
    Shuld the prio not be valid for the aspect TEL (if it is not generic)?
    The only aspect not having priority is ANT2?

    ReplyDelete
    Replies
    1. Priority basics: an A+B claim has only pri from an A+B disclosure, not from an A-only disclosure, not from a B-only disclosure, not from a A+C disclosure.
      G 2/98, r.6.6

      Delete
  3. lookingforwardtofriday8 March 2017 at 12:11

    Hi,

    re: 6C). I am not entirely sure and agree with your answer and this was what at first I was going to put as my answer. Being a less familiar aspect of my learning and being recently amended, I did have a printout of the revised ADA guidelines:

    http://www.epo.org/law-practice/legal-texts/official-journal/2015/etc/se3/p8.html

    and noticed the footnote under [2] at the bottom, wherein it is stated that:

    As a rule, automated payments under point 5.3(a) and (b) are booked by the EPO within two to three working days after the decisive payment date or the receipt of the debit order. Payments under (c) are normally booked within four to five working days of receipt of the debit order, because non-automated payments, i.e. debit orders filed by letter or fax, take longer to process. Deposit account holders who use both automated and non-automated payment methods in parallel should therefore ensure that their account always has sufficient funds available for all debit orders submitted.

    With 'decisive date' according to Annex A.1 ADA being the last day payment can be made i.e. 1m after filing in this case for filing/search fees.

    So this made me suspicious about the '2 day' aspect in the question. So I ended up saying as replenished on day 2 it would not have yet been booked by the EPO and so when they did it would have been sufficient funds and so not late??

    It seemed like too much of a coincidence and further processing was too obvious a way to go so I went with this and no further action. Interesting for your interpretation

    Thanks, from

    ReplyDelete
    Replies
    1. I did the same. The footnote has the exact same wording as the question so I went for this answer too. It would be interesting to know the view of Delta patents on this.

      Delete
    2. Sorry, donot get your point. The question says your replenished after the email, which was send on the last day of the period, so you replenished too late.

      Further, the footnote says "within" two or three days, so it could be immediately or the next day. In my view the footnote is meant as a warning: we may debit a bit later than you think, so make sure the money is still there.

      In my view, AAD 7.1 and AAD 8 leave no room for your interpretation.

      Delete
  4. What about TEL, i.e. TEL1-ANT1, being patentable on its own? If a new application was filed with a claim directed to TEL on its own could validly claim priority from US-P as TEL is disclosed therein and then be patentable. Then again, the question was if TEL2, i.e. TEL+ANT2, was patentable so I am not sure this earns points.

    ReplyDelete
    Replies
    1. I think if TEL as such is not patentable, then TEL2=TEL+ANT2 is not patentable regardless of the publication of TEL1
      assuming that other (generic) smart phones also have an antenna that can be replaced by ANT2 or already use ANT2;
      of course, if one starts to speculate, TEL could have other new features, which do not make it inventive in itself, but have a combined effect with ANT1 or ANT2 ...
      Such a combined effect might even enjoy priority of US-P?

      Delete
    2. @ Pablus: tehre is usually no points for questions that are not asked expllicitly and also not implicitly. Certainly spending time on non-asked questions instead of asked questions is an effective way to get into time trouble.

      @Luty: ANT1+ANT2 can never have prio from US-P, as US-P only shows ANT1 as antenna (as part of TEL1).

      @All: please postr your comments on the paper and its questions, and not on all kinds of imaginary variants - the blog would explode and the relevant discussions would drown. The paper is very well drafted and interesting enough to get the attention it deserves, and to get a discussion that we can all benefit from. There is no need at all to make this blog a forum on exotics.

      Delete
  5. In 6b, are you sure that there should be 3 additional pages? I count to 36 (32+4) in the Purtugese version and 33 (29+4) in the English one. None of them seems to have any abstracts.

    However, I missed that the additional fee is part of the filing fee. Very well hidden in the convention via a number of references leading to R38(2), baahh!!

    ReplyDelete
    Replies
    1. Does not matter whether the abstracts are already submitted or not, you always need to count one page for it.

      See e.g. GL (2016) A-III, 13.2

      Delete
  6. Thank you for posting the answers. I did surprisingly well. I assume that I only lost 10-15 Points in DI - lack of time.
    But I am confused at 6
    in 6a you already are art 37 pages (incl. the abstract) - so 2 pages extra
    in 6b you add again 1 page for the abstract and you are now at 3 pages extra.

    Probably I miss something ... wrote all parts ... mentally a bit exhausted

    ReplyDelete
    Replies
    1. Ai... our original answer to 6b used 3 pages fees for the PT-case, which should have been 2 as in 6a...

      Thx for spotting it. I corrected the answer.

      Delete
  7. Many thanks for posting these answers. For question 3, my understanding of R. 40(3) EPC led me to a slightly different assessment:

    As JP12345 is a Japanese patent application available to the EPO under R. 53(2) EPC (OJ 2012, 492/494), I considered the certified copy required by R. 40(3) EPC to be deemed to be duly filed (see R. 53(2) EPC which is referred to in R. 40(3) EPC, last sentence).

    Based on the above, I thought in this case only the translation should be filed under R. 40(3) EPC (but no certified copy of JP12345 required).

    Do you share this view or am I missing something?

    Best,
    CF

    ReplyDelete
    Replies
    1. EPO only takes EP-direct applications and PCT applications filed with EPO as rO under R.40(3) - OJ 2009, 486, referred to in GL A-II, 4.1.3.1.
      So, much less types of earlier applications than for the priority applications under R.53(2): that is the much longer list of OJ 2012, 492 you refer to.

      Delete
    2. I wrote that generally the certified copy should be filed but if priority is claimed then it will be included in the file by EPO, is this wrong?
      would the certified copy of R40(3) still be required in view e.g. of different timing of inclusion by epo u. R53(2) as opposed to the 2m of R40(3)?

      Delete
  8. I have a question in regard to Q5:
    My response to c) was in a) ... do I get points for that?

    ReplyDelete
    Replies
    1. If you mean to discuss RE of priority before EPO as rO under R.26bis.3: I assume yes, but maybe not all.
      Discussing R.26bis.3 under a) may also have the risk that you may have failed to discuss R.26bis.1 (adding priod declaration) that you definitely need for full marks under a).

      Note that Q5-a) is not limited to the EP-phase, whereas Q5-c) is.

      Delete
    2. In the heat of the exam I missed the 14 Month rule ... Basically, I knew it, but I took first the DII Part, which consumed a lot of mental resources.

      Delete
  9. - Tim - very difficulty exam. I studied a lot starting from the last summer, reading the annotated patent book and the material from the syllabus, printing and emphasing passages, doing at least two questions from the Deltapatent book each day e doing full papers under time costraint on the weekends, cheking case law, for .... just getting few points above the pass threshold!

    I do repeat: very difficult exam, still I am very happy.

    PS: To me extra time was essential to get the necessary points to pass.

    ReplyDelete
  10. The Examiner's Report says: "Legal basis for the interrelationship between the PCT and EPC and EPO practice is rarely adequately cited."

    What would they refer to?

    And the Examiner's Report is not complete either in this. I see e.g. no reference to Art.22(3) PCT in the answer to Q.5-b, which would be neede to get from the PCT to the 31m from R.159(1) EPC

    And I think they Examiner's Report is overdoing sometimes:
    In Q.5-b, they refer to Art.153(2) EPC when referring to R.159(1) EPC: has this article reference ever been needed when R.159(1) was needed?
    The Examiner's Report is also not cinsistent in this: they do dot cite Art.153(2) in Q.1-a...

    The Examiner's Report gives confusing and non-consistent guidance in my view.

    Anyone any thoughts on this?

    K.

    ReplyDelete
  11. The answer to Q.5-c in the Examiner's Report cites OJ 2007, 694 as the basis for EPO applying the all due care citerium in restoration of priority before the EPO as receiving office.

    How could one find this reference, and also know that the reference gives this information?

    I cited Art. 122 EPC, as RE is the same as restoration, and Art. 122 has all due care. Did that give me marks? I donot know...

    I checked other references:
    - OJ 2007, 692 is not in the Ancillary Regulations (which are part of the EQE syllabus, bus 10-year old OJs are not... or are they? how do I know which?)

    - Applicant's Guide Int. Phase - Annex C - EPO says EPO uses all due care: would that be as good as the old OJ?

    - Euro-PCT Guide refers to OJ 2007, 692 in the margin of par. 133, but the all due care requirement is in par. 135, so how can I know from the Euro-PCT Guide that the OJ gives me the all due care legal basis? Would the Euro-PCT Guide par. 133 have been a valid legal basis?

    Would be nice if the Examiner's Report also mentions alternative legal basis, if they allow it. Does anyone know? DeltaPatents maybe?

    K.

    ReplyDelete
    Replies
    1. Bear in mind the deltapatents comments on those "D1"-style questions:

      "Scoring about 20 to 25 marks within 2 hours seems however feasible for a well-prepared candidate". Just 50% of the marks are available for well prepared cadidates!!!

      This is paper D, my dear: hard, demanind and unfair.

      I think that the references you cited are definitely correct for attacting, in the Examiner'views some marks, not ALL marks.


      -Trust_me

      Delete
  12. The Examiner's report says:
    "The applicant has to request further processing under Article 121 EPC. The fee for further processing is 50% of the search fee and filing fee."
    I am surprised that the answer5 does not require how you can request further processing in this case. The answer rather suggests to me that a written request is needed, which it is not...

    DeltaPatents answers Q.6-c by saying how the further processing needs to be done (see their post: as there is an AAD active, enough to ensure that there us enough money at the end of the further processing period - fees + 50% as FF fees)

    I expected the last to be needed.

    In other questions, where re-establishment is requested, it is needed to give a very detailed list of all the different steps and requirements.

    Why is this so different? WHy so much detail for re-establishment -in a straightforward re-restablishment situation-, and no detail at all for further processing -in the intreesting automatic debiting situation-?

    Any comments?

    K.

    ReplyDelete