Wednesday, February 27, 2019 DI 2019: Entitlement, third party observations, missing claims, priority, debit accounts

The DI part of the 2019 D paper again had a variety of topics. Scoring about 20 marks in 1,5 hours or 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. 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!

Our answers to the DI-part of the 2019 paper are given below:

(For DII, see here; for general impressions to D as a whole, see here).

Q1 (9 marks)

EPC

EP-A has received R71(3) communication with text intended for grant.

To make use of entitlement under Art. 61(1) EPC, EP-A must not be granted yet – R.16(2)(b).

As R.71(3) was issued today, EP-A is not yet granted and still pending.

Actions before the EPO for company B:

(a)

·          Request EPO to stay grant proceedings, and provide evidence that B has instituted entitlement proceedings against applicant A at competent national court in EPC state – R. 14(1) EPC.

·          Do this today or a.s.a.p. The EPO will stay proceedings.

·          Assuming decision is favourable to B, provide evidence of this to EPO within 3 months after decision became final – R. 16(1)(a).

·          For EP-A to proceed to grant, inform EPO that company B will prosecute EP-A as its own application – Art. 61(1)(a).

·          EPO will resume proceedings on a date specified in a communication sent to company B – R. 14(2).

·          The non-elapsed time of the 4m period to respond to the R. 71(3) communication (which was issued today) starts to run again from the date of resumption – R. 14(4). If stay is requested today, company B will have full period to respond.

·          Within this period, file amended claims - R. 71(6). Delete original claim 3 and file new claim 1 as combination of original claim 1 and 2. Give basis for amendments [R. 137(4)]. Since original claims 1 and 2 were allowable, the examiner will have no objection to the new main claim. Bring description into conformity.

·          If speed is desired, immediately file translation of new claim 1 into other two official EPO languages; pay fee for grant and printing [Rfees2(1).7] and waive right to receive further R. 71(3) communication [GL (2017) C-V, 4.11; OJ 2015, A94 or OJ 2015, A52].

·          Period for paying renewal fees is not interrupted – R. 14(4) -, but their due date is deferred until the date the proceedings are resumed – GL (2017) E-VII, 1.5 mutatis mutandis / J 902/87 mutatis mutandis. So, any renewal fee falling due between the date of stay and the date of resumption must be paid by the date of resumption.

·          EP-A will be granted to company B.

(b)

·        At the latest on the day before the mention of the grant of EP-A (or as long as EP-A is pending), file a divisional application with original claim 3 as main claim – Art. 76, R. 36(1) EPC.

·        File divisional in same language as EP-A – R. 36(2).

Q2 (7 marks)

PCT-X was field in English without priority at EPO as rO on 13/04/2017.
PCT-X claims:
1. product A
2. product A + feature B
Client considers 2 unclear and has prior art document showing product A.

What can client do...?

(a) ...during International phase:

·       File 3^rd party observation with IB regarding lack of novelty of claim 1  – AG-IP 11.109-11.117; Euro-PCT Guide (2018) 374; GL/PCT-EPO (2017) E-II.

·       This can be after publication of PCT-X, i.e. 18m from priority date 13/04/2017 -Art.21(2)(a) PCT-, so promptly after 13/10/2018, and before 28m from priority, so until 13/8/2019 – AG-IP, 11.110.

·       Documents published before PCT filing date and relevant for novelty (inventive step) are considered – AG-IP, 11.116.

·       Submit document disclosing product A via ePCT – AG-IP, 11.111 – and explain that it destroys novelty of claim 1, using language of publication, i.e. English.

·       Observations about clarity are not allowed -AG-IP 11.109- and would be rejected, so nothing can be done about claim 2 in international phase.

·       The document and observations will be transmitted to competent ISA and/or IPEA, which will take them into account when drawing up the relevant report, if received in time – AG-IP, 11.117.

·       The document and observations will be available for inspection via PATENTSCOPE

·       The document and observations will be forwarded to dO/eO.

 (b) ...regional phase before EPO:

·       3^rd party observation can also be filed with EPO while Euro-PCT-X is pending – Art. 115 EPC.

·       Submit observations in writing – in EN, FR or DE language, and state grounds – R. 114(1).

·       Grounds:

o   claim 1 lacks novelty, and provide published document as evidence;

o   claim 2 lacks clarity and explain why.

·       EPO accepts observations on all aspects of patentability, including novelty and clarity under Art. 84 - GL (2017) E-VI, 3.

·       If observation about novelty were filed in PCT phase as outline in (a), the EPO as dO/eO will take them into account – OJ 2017, A86

·       EPO as dO/eO will expedite first OA if they were not file anonymously and if explicitly requested – OJ 2017, A86; EPG (2018) 580 & 586.

·       The observation can be submitted at any time while Euro-PCT-X is pending, but will only be taken into consideration by the examining division if received before decision to grant is handed over to EPO internal postal service – GL (2017) C-V, 6.1.

·       Remark: as the question indicated “…while the competitor’s application is pending…”, opposition is not discussed

Q3 (9 marks)

Last month, X was filed on last day of priority period, claiming priority from earlier DE1.DE1 describes capsules made from Al, and claims capsules made from Al and capsules made from metal.
X has same description as DE1, but forgotten to file the claims with application X.
In priority interval, an article disclosing capsules made from Al and capsules made from metal was published.

Applicant wants protection for capsules made from Al and capsules made from metal.

(a)      PCT-X (PCT)

·          Currently, PCT-X has not been accorded a filing date because no claims were filed. This is a missing element – Art. 11(1)(iii)(e). Can be remedied.

·          Priority of DE1 was claimed on filing and PCT form PCT/RO/101 contains statement of incorporation of reference under R. 4.18, so possible to confirm under R 26 (a) that missing claims are incorporated by reference.

·          Applicant C can do this of his own accord now.

·          The EPO as rO will most likely spot the defect and invite C under R. 20.3(ii) to confirm that missing claims are incorporated by reference within 2 months from date of communication – R. 20.7(a)(i). If no invitation is sent, C has at least until 2 months from date when PCT-X was submitted to EPO – R20.7(a)(ii)-.

·          Within this time limit, C must also submit a copy of DE1  - R. 20.6(ii) -  and provide the missing claims on sheets as contained in DE1 - R. 20.6(i).

·          The claims are deemed to have been received on the date when PCT-X was submitted – R. 20.6(b), so PCT-X is accorded the last day of the priority period as the international filing date.

·          Assuming priority is valid, the effective date of claims is the filing date of DE1. Article published afterwards, so not relevant for patentability and C can get protection for capsules made from metal and from aluminium.

·          Remark: AG-IP 6.028, EPG (2018) 81-84 and GL/PCT-EPO (2017) B-III, 2.3.3 and H-II, 2.2.2 may have been helpful to answer this question.

(b)          EP-X (EPC)

·          Only missing parts of description or drawings can be incorporated under R. 56(3) EPC, so not claims.

·          Claims don’t need to be submitted on filing, but must be present – Art. 78(1)(c), R.57(c).

·          Applicant C can file claims of his volition today, or has until 2 months from notification of invitation from EPO under R. 58 to file them.

·          The late-filed claims are regarded as amendments under Art.123(2) EPC – GL (2017) A-III, 15, which cannot extend beyond filed description and any drawings.

·          Capsules made from aluminium are disclosed in description, so can be claimed in EP-X without violating Art. 123(2).  Assuming priority is valid, eff date of the claim is the filing date of DE1 -Art.89-, published article is not prior art -Art.54(2)- and protection can be obtained for Al capsules.

·          Capsules made from metal not disclosed in description, so cannot be claimed in EP-X. Protection not possible for capsules made from metal.

·          Filing a new application for capsules made from metal will not help. Too late to claim priority of DE1 (the 12m period expired 1 month ago) – Art.87(1)- and published article would be novelty-destroying Art. 54(2) prior art for a new claim.

Q4 (7 marks)

30 May 2918  EP1 granted to Y claiming device A
16 June 2016  EP1 filed, claiming priority from KR1
19 Nov 2015  CA1 published
30 June 2015  KR1 filed by Y in Korean
14 May 2014  CA1 filed by Y discloses device A

(a)  Yes

·        Claim 1 directed to device A cannot validly claim priority from KR1 – Art 87(1). Although EP1 was filed within 12m priority period of KR1 (30/6/15 + 12m -> 30/5/16, possibly plus R.134(1)), and both were filed by Y, KR1 is not Y’s first application for device A.

·        CA1 also discloses device A and was filed on 14/5/14, so before KR1 was filed on 30/6/15. CA1 is thus Y’s first application. Also not possible for KR1 to be considered first application in meaning Art. 87(4) because KR1 was filed in a different State (KR) than CA1 (CA), and was not withdrawn before filing of KR1 because CA1 was published on 19/11/15, well after KR1 was filed.

·        Too late for Y to remedy this by adding a priority declaration to CA1, as that should have been done within 16m from CA1’s filing date, so by 14/5/14 + 16m (R.52(2)) -> 14/9/15 (plus possible R.134(1) extension)

·        Effective date of sole claim is thus EP1 filing date: 16/6/2016.

·        CA1 was published before this date and also discloses the claimed device A, such that CA1 is novelty destroying Art. 54(2) prior art.

·        File opposition and pay opposition fee before 30/5/ 2018 + 9M – Art. 99(1)

·        So before 28/02/2019 (Thu) – R 131(4)

·        Based on the ground of lack of novelty – Art. 100a – and submit CA1 as evidence – R.76(2)(c).

·        EP1 will be revoked – Art. 101(2).

(b)  No

·       The patent proprietor Y can be asked to provide a translation of the priority document by the EPO under R. 53(3), but only if validity of priority claim is relevant for the assessment of patentability – GL (2017) A-III, 6.8

·       The contents of KR1 are not actually relevant for assessing the validity of the priority claim, as the priority claim from KR1 can never be valid in view of CA1 (see a)).

·       KR1 also not needed as evidence, so also need for EPO to request a translation under R. 3(3).

Q5 (8 marks)

PCT-X has two seperate inventions. EPO indicated as ISA on PCT/RO/101. Automatic debit oder filed.
Received invitation to pay one additional seach fee dated 25/01/2019.
Received email today, 26/02/2019, informing you that deposit account didnot contain sufficient funds.

What will ISR and WO-ISA cover...?

PCT

(a)
...if you replenish your account to the amount of the additional search fee today?

·        Time limit to pay additional search fee:

25/01/2019 + 1m  [Art.17(3)(a), R. 40.1(ii), R.80.2] -> 25/02/2019 (Monday)

·        EPO = ISA, so fees must be paid directly to EPO – R. 40.2(b)

·        EPO allows automatic debiting for payment of additional search fee – AAD (2017), 2.1(e) and in particular 3.3(i)

·        Payment is normally considered to have been received on last day of the period 25/02/2019 – AAD, 6.2(a), but insufficient funds on that date, so not executed – AAD, 7.1- and applicant informed.

·        Payment considered made on date of replenishment – AAD, 8 –, so today = 26/02/2019

·        But that is 1 day too late.

·        Fee not paid in time, so second invention will not be searched and ISA+WO will cover 1^st invention only – Art. 17(3)(a); also GL/PCT-EPO (2017) B-VII, 6.2

(b)
...if, on 14/02/2019, you gave an order to a banking establishment in an EPC state to transfer EUR 10.000 to the despit account?

·        Rfees7(3)(a) and (b), second half-sentence apply to replenishment payments of deposit accounts – ADA (2017), 4.1.

·        Order to replenish account was given to bank in EPC state on 14/2/19, 11 days before period to pay expired on 25/02/2015 -RFees 7(3)(b).

·        Provide evidence of order date to EPO and payment is considered made in time – Rfees7(3)(a)(ii).

·        No surcharge needs to be paid – ADA 4.1, Rfees7(3)(b), 2^nd half-sentence.

·        The EPO will correct the debit with effect for the original decisive payment date – AAD, 9.2.

·        10,000 euros sufficient to cover amount of additional search fee of EUR 1.775 – PCT R. 40.2(a), R. 158(1) EPC; Rfees2(1)(2); or EPO-WIPO Agreement OJ 2017, A115 + OJ 2018, A27 + OJ 2018, A35.

·        Second invention will also be searched and ISR+WO will cover both inventions – Art.17(3)(a).

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 (once available)
If you are looking for first and general impressiona about D 2019: it is here.

The D paper will available here in English, ici in French and hier in German (once received).

Roel, Diane, Jelle

(c) DeltaPatents 2019