Wednesday, 28 February 2018

DI 2018: our answers

The DI part of this year's D had a variety of topics. Scoring about 20 to 25 marks within 2 hours seems 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 (some may choose to use only 1,5 hours for DI to have 4 hours for DII), 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 to the DI-part of the 2018 paper:

Q.1 – 10 points

Three main actions:
  1. Get application complete
  2. Get early publication
  3. Create provisional protection

  • PCT-A had a description and (part of) a claim when filed on 20/2/18, so 20/2/18 was awarded as the international filing date – Art.11(1)(iii)(d)&(e) PCT
  • so problem is that PCT-A has a missing part of a claim – R.20.5

1) get PCT-A complete:
  • prio was claimed from FR-A on filing PCT-A - R.4.18
  • missing parts of the claims is in prio document FR-A – R.20.5(a)(ii) PCT
  • PCT/RO/101 has conditional in corporation statement of missing parts R.4.18
  • under R.20.6 and R.20.7(a)(ii): at own motion, within 2m so by 20/2/18 + 2m [R.80.2] -> 20/4/18 (Fri), but want asap, so do now:
    • confirm incorporation – R.4.18
    • R.20.6(a)(i) missing sheets (second page of the claim)
    • R.20.6(a)(ii) copy of FR-A
    • R.20.6(a)(iv) indicate where in FR-A
  • => filing date kept on 20/2/18, so prio valid and claim complete

2) get early publication in PCT:
  • request early publication with the IB - Art.21(2)(b) PCT
  • as search report not yet available, need to pay a special fee to IB - R.48.4(a)
  • will be published in FR – R.48.3

3) national requirements:
  • after early international publ in FR, Art.153(3) EPC & Art.67(1), prov protection effective in an EPC state as soon as national requirements are fulfilled -  Art.67(3), AG-IP Annex B
  • this requires at least translations of the claims in all non-FR speaking EPC states (except CH/LI) - NatLaw Tables III.B

4) Background (can conside to add:) to be able to enforce it: 
  • early entry Art.23(2) PCT, OJ 2013, 156
  • get a fast grant:
    • PACE examination once exam div responsible
    • waive R.161/162, depending on WO-ISA amend on entry

Q.2 – 8 points

a) claim 1 of EP-B:
  • intervene Art.105(1)(a) because proceedings for infringement have been instituted
    • before 3m from 22/2, so 22/2 + 3m -> 22/5/18 (Tue), but preferably asap
    • file notice of intervention – R.89(1)
    • file reasoned statement – R.89(2), R.76, R.77
    • file proof that infringement proc have been institiued – Art.105(1)(a)
    • pay oppo fee – R.89(2)
    • as any ground possible – G 1/94-, can raise (new) ground lack of novelty of claim 1 w.r.t. D1 – Art.100(a), Art.54(3) in notice
  • intervention will be treated as an opposition – Art.105(2) – and will be successful in respect of claim 1
  • Could alternatively file third party observations –Art.115-, as new ground is prima facie relevant it will be let in G 10/91, so will have same outcome.

b) amended claim 2 of EP-B:
  • clarity Art.84 is not a ground of opposition – Art.100 has exhaustive grounds; G 3/14-, so cannot attack original claim 3
  • amendment 2+3 is an amendment introducing a complete (allegedly unclear) dependent claim 3 in the independent claim 2,
    • so did not introduce unclarity as it was already there, so cannot attack amended claim 2 based on clarity – G 3/14, Art.101(3)
    • so cannot invalidate amended claim 2 in oppo/intervention based on Art.84
  • So, proprietor can amend the patent to an amended claim 1 only, corresponding to the combination of claims 2 and 3 as granted

Q.3 – 8 points

a) filing date:
  • on 2/11/17, no description, so no filing date yet – Art.80, R.40(1)(c) EPC
  • 15/11/17, as only then the description was filed – R.40(1)(c)
  • no language requirements for a filing date – Art.14(2): any language

b) actions:
Situation as-is:
  • filing date is accorded, as no representative needed for that – Art.133(2)
  • payments on 27/11 OK, as
    • in time: filing and search fee : 15/11/17 + 1m [Art.78(2), R.38] -> 15/12/17 (Fri), and
    • payments can be done by anyone – GL (2016) A-X,1
  • translation on 27/11 seems to be in time as 15/11/17 + 2m [Art.14(2), R.6(1)] -> 15/1/18 (Mon)
  • but translation filed on 27/11 were filed by Argentinian, so non-EPC, applicant E, who needs a prof rep for acts after the filing date incl this translation – Art.133(2)
  • so translation not validly signed, thus not filed – R.50(3)
  • EPO will invite to appoint a representative – R.57(h), R.58- within 2m, as was done: 5/2/18 +10d +m 2m -> 15/4/18 (Sun) -> 16/4/18
  • EPO will invite the applicant/representative to validly sign – R.50(3)
    • representative can confirm approval of filing of the translation
  • if signed after invitation, translation keeps original date – R.50(3)
  • also see GL (2016) A-VIII, 1.3.1. last par

Q.4 – 6 points 
  • Time limit to file notice & appeal fee expired:
    • 15/9/17 + 10d [R.126(2)] + 2m [Art.108] -> 25/11/17 [Sat] -> 27/11/17
  • and for grounds:
    • 15/9/17 + 10d + 4m [Art.108] -> 25/1/18
  • So, both time limits missed
  • Both adversely effected, so both entitled to appeal – Art.107

a) for patent proprietor:
  • can use RE for missed periods –Art.122(1)- as FP is excluded for proprietors (only for applicants)
  • missed appeal period despite isolated mistake J 5.80 is basis for all due care
missed period for notice & appeal fee:
  • can request RE for notice
  • within 2m from removal of cause of non-compliance = today, when R.82(2) notices – R.136(1), so until 27/2/18 + 2m -> 27/4/18 (EPO closed) -> 30/4/18, but preferably asap
    • request in writing – Art.122(1), R.136(1)
    • explain why unable to observe the time limit despite all due care
    • pay RE fee – Rfees 2(1).13
    • complete omitted act = file notice of appeal and pay appeal fee – Rfees 2(1).11
also missed period for grounds:
  • can request RE for grounds
    • within 2m from removal of cause of non-compliance = today, when R.82(2) notices – R.136(1), so until 27/2/18 + 2m -> 27/4/18 (EPO closed) -> 30/4/18, but preferably asap
    • request in writing – Art.122(1), R.136(1)
    • explain why unable to observe the time limit despite all due care
    • pay RE fee – Rfees 2(1).13
    • complete omitted act = file grounds of appeal

b) for opponent:
  • today too late to file notice / time limit expired
  • FP not available for opponents, only for applicants –Art.121(1)
  • RE not available for opponents for missed notice – T 210/89; G 1/86
    • RE would have been available for the 4m period for grounds, if notice timely filed and appeal fee timely paid and only 4m period for grounds missed – G 1/86
  • so cannot appeal, can only be present as a party-as-of-right – GL 92016) E-VII, 3.1.2

Q.5 – 8 points

a) restrict without fees:
  • the R.71(3) / R.71(6) period expired yesterday
  • R.71 does not provide for amendments / reopening examination after approval, but R.71a(2) does under disretion of exam div – R.137(3)
  • new amendments will be let in and allowed by the examining division -R.137(3)- if applicant files further prior art – GL (2016) C-V, 6.1- and if no re-opening if the entire examination is needed such that grant is not substantially delayed – GL (2016) H-II, 2.6; G 7/93
  • so applicant must file EP-H, argue that claim set is amended to just claim 2 to get novelty w.r.t. EP-H, argue Art.123(2) OK (trivial as direct combi 1+2), and give basis (direct combi 1+2)
  • examining division will then issue a new R.71(3) – G 7/93
  • Third party observations –Art.115- by G are legally not allowed, as G is a party, not a third party. Trying to file them anonymously or with a strawman would be abuse of law.

b) restrict without having to explain why:
  • allow patent to get granted
  • thereafter, request limitation under Art.105a(1), R.92(2): 
    • file written request with claims limited to claim 2 – R.92(2)(d)
    • pay limitation fee – Art.105a(1), Rfees 2(1).10a 
    • no need to give the underlying reasons – GL D-X, 4.2
  • no examination as to novelty is done, only Art.84 and Art.123(2) and whether it is a limitation – Art.105b(1), R.95(2)
  • Art.123(2) and clarity are OK, as direct combi granted claim 1+2
  • need to ay fee and translate amended claims = file combi of translated claims 1+2 – R.95(3), Rfees 2(1).8

  • file divisional claiming just claim 2 while EP-G is pending, at the latest the day before the mention of the grant  of EP-G – Art.76(1), R.36(1)
  • but will require much more fees and will take longer

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 2018: it is here.

The D paper is available here in Englishici in French and hier in German.

Roel, Diane, Jelle, Jessica

(c) DeltaPatents 2018


  1. Q5b, what about filing 3rd party observations anonymous..

    1. See a): Third party observations –Art.115- by G are legally not allowed, as G is a party, not a third party. Trying to file them anonymously or with a strawman would be abuse of law.

  2. Thank you for these!

    5a) Nothing mentioned about fees? R.71a(5)

    1. Why would you mention R.71a(5)?

    2. Because the question was about how to restrict without paying any further fees. Therefore, I thought it would be worth mentioning that the fees already paid will be credited to the fees to be paid for the second R.71(3) communication.

    3. Good point. However, there is no information that can lead you to conclude that you paid too much: claims already well below 15, and no mention of any fee decrease (which never happened in the last years, but will happen for some fees as of 1 April 2018!).
      So, no fees are to be credited, so probably no marks for discussing that. But possibly there may be a mark (of half?) for indicating that "the fees were already paid so do not need to be paid again".

  3. Q2 - wasn't there something about 'he wants to become party to proceedings'? This would make me omit all comments about third party obs.

    1. Yes, it says "Company D, who want to become a party to the proceedings...", and if he would be so, then he cannot file third party observations.

      But you are asked to "Advise company D", and in advising, you should review the wishes/proposals of the client and if his wish/proposal is not optimal, you should advise a better option.
      So, options which do not make him a party should be considered and if they are better, also advised.

  4. Q4;
    I started from A106(2) and T244/85.

  5. For Q1, direcltly anticipated entry into EP phase + required anticipation of publication could be an option of response?

    1. Do you mean immediate entry into EP phase before doing anything else? This does not lead to provisional protection a.s.a.p. You want your application to be published with a "proper" claim. This can be fixed in the international phase via incorporation by reference. The EPC procedure under R. 56 doesn't apply to missing parts of claims. The first opportunity to amend the claim would be in response to the search report (assuming there is basis in description for the desired claim).
      EP entry after the claim has been "fixed" and early publication of the EURO-PCT should be possible.

  6. The Examiner's Report is out!

    Had no chance to check ik out in detail, but a few things caught my eyes when glacing it through:

    - the Examiner's Report notes that "An unexpected amount of points was lost due to miscalculation of time limits."

    - The Examiner's Report notes that "It has become a trend that candidates skip entire questions from D1. However, these candidates typically do not pass." My experience is different with candidates that are well-prepared: they can still score 50-60 out of the 90 that are accessible if they skip a 10-mark DI question. So what is happening with the group the ExRep referfs to? Does this observation mean that these candidates score so low on DI as a whole that they can not pass with a reasonable DII? Or that their legal knowledge is too poor for DI and also for DII? Do these candidates also score low on the DI questions that they do answer? How does it compare to candidates that do not skip a question but score only 1 mark on one of the DI questions? Anyhowm the observation may be a signal that some candidates compromise legal preparation and count on their DII - but a good DII requires good legal knowledge, as good as for DI, and this year even more than in the last years.

    - "Full marks were awarded also for candidates indicating the legal basis in the 2017 Guidelines." is a statement worth noting as that was not in force on the relevan date, 31 Oct 2017. Note that this also implies that marks were awarded for Guidelines as legal basis.

    - the latter is possibly an implementation of the last sentence of "Full marks were only awarded when the full legal basis was cited to support the analysis. However, alternative relevant legal bases also attracted marks."

    - the Examiner's Report starts with a new paragraph: "Purpose and extent of the examiners’ report - The purpose of the present examiners’ report is to enable candidates to prepare for future examinations (cf. Article 6(6) of the Regulation on the European qualifying examination for professional representatives)."

    - the Possible Solution does not have any surprises in it (we did miss out a few points - I estimate we would probably have scored between 35 and 38 out of 40 with the answer that we posted)